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  1. #1
    Join Date
    Feb 2007
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    Any Intellectual Property Attorneys Out There?

    Hey guys and gals - l have a friend who needs some pretty basic information about trademark infringement. His website is being accused of infringing a mark, primarily by its very name, and he has a couple of questions about it that I don't feel comfortable answering, as a non-expert in the field. One question, which will probably be better to handle either via email or a phone call if we can exchange info first via a PM, is whether it seems like what he's doing is an infringement at all. Another, which I guess can be discussed publicly here generally is this: is the owner or holder of a mark able to enforce that mark (if enforce is the right term) against one purported infringer while permitting many others, who are utilizing the mark in exactly the same way, to continue to do so? In other words, does the holder of the mark have the right to selectively enforce his rights, or is there any kind of "waiver" or any kind of diminished protection for the holder if he knowingly permits infringement of it by others, and has done so for a period of years?

    Third, what types of damages might my friend be liable for in a type of situation like this, where the holder of the mark is not going to be able to show any actual monetary damages, any loss of income or anything of the sort, due to the existence and operation of my friend's site? Are there statutory damages? Based on what? I just don't know the terrain here at all.

    Thanks for any responses, either PM or on the public boards, that I can get.

  2. #2
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    Quote Originally Posted by tommy View Post
    Hey guys and gals - l have a friend who needs some pretty basic information about trademark infringement. His website is being accused of infringing a mark, primarily by its very name, and he has a couple of questions about it that I don't feel comfortable answering, as a non-expert in the field. One question, which will probably be better to handle either via email or a phone call if we can exchange info first via a PM, is whether it seems like what he's doing is an infringement at all. Another, which I guess can be discussed publicly here generally is this: is the owner or holder of a mark able to enforce that mark (if enforce is the right term) against one purported infringer while permitting many others, who are utilizing the mark in exactly the same way, to continue to do so? In other words, does the holder of the mark have the right to selectively enforce his rights, or is there any kind of "waiver" or any kind of diminished protection for the holder if he knowingly permits infringement of it by others, and has done so for a period of years?

    Third, what types of damages might my friend be liable for in a type of situation like this, where the holder of the mark is not going to be able to show any actual monetary damages, any loss of income or anything of the sort, due to the existence and operation of my friend's site? Are there statutory damages? Based on what? I just don't know the terrain here at all.

    Thanks for any responses, either PM or on the public boards, that I can get.
    Not an IP attorney but I did sleep at a Holiday Inn Express last night. But seriously, I worked for two companies in my career, both of which had extensive portfolios of IP, and a couple of trademarks that risked becoming generic. The IP lawyers at both considered selective enforcement a slippery slope and aggressively and successfully defended the marks broadly to retain the rights.

  3. #3
    Quote Originally Posted by 77devil View Post
    Not an IP attorney but I did sleep at a Holiday Inn Express last night. But seriously, I worked for two companies in my career, both of which had extensive portfolios of IP, and a couple of trademarks that risked becoming generic. The IP lawyers at both considered selective enforcement a slippery slope and aggressively and successfully defended the marks broadly to retain the rights.
    My experience is the same. Every time I came in touch with enforcement issues (my clients usually infringing ) the other side always made it clear that they always aggressively defended the rights.

  4. #4
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    Feb 2007
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    Walnut Creek, California
    Same as you, Tommy. But there must be a real risk of confusion. If your company's name is McDonald's and you are a stationery store, there is no chance of confusing the two companies.

    Plus, I think entrepreneurs have the right to use their own name, as long as it is real.

    Still, you need a TM lawyer.

  5. #5
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    Feb 2007
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    Deeetroit City
    Quote Originally Posted by Jim3k View Post
    Same as you, Tommy. But there must be a real risk of confusion. If your company's name is McDonald's and you are a stationery store, there is no chance of confusing the two companies.

    Plus, I think entrepreneurs have the right to use their own name, as long as it is real.

    Still, you need a TM lawyer.
    Have him check his business insurance policy, the insurer may have the duty to defend. Some homeowners policies can include business run out of the home. Most insurers have adopted modified standard forms that exclude accused acts of infringement (which was intended to mean only patent infringement, but insurance lawyers successfully argued that the exclusion included trademark infringement and other acts of unfair competition). Still, worth checking.

  6. #6
    What if it includes the names: Duke or Bluedevil?

    For example, this website: Duke Basketball Report.

    Not saying there is a problem.
    ~rthomas

  7. #7
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    Quote Originally Posted by rthomas View Post
    What if it includes the names: Duke or Bluedevil?

    For example, this website: Duke Basketball Report.

    Not saying there is a problem.
    My friend's problem is not exactly that, but not dissimilar really either. So let's take that as an example. What of Duke Basketball Report? Could the university force DBR to shut down -- or change its name -- for using the word "Duke" in its name? Why or why not? Anyone care to opine on that? Informed opinions could really be helpful actually. THanks.

  8. #8
    Join Date
    Mar 2008
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    raleigh
    also depends on who is more likely to fund the attorneys until the other backs off or settles....i'm no TM or Patent attorney, but i've been involved in numerous TM, SM and Patent situations where i found that a fat wallet has advantages...


    lawyer fun .
    "One POSSIBLE future. From your point of view... I don't know tech stuff.".... Kyle Reese

  9. #9
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    Quote Originally Posted by rthomas View Post
    What if it includes the names: Duke or Bluedevil?

    For example, this website: Duke Basketball Report.

    Not saying there is a problem.
    DBR has a licensing agreement. We're good.

    -jk

  10. #10
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    Quote Originally Posted by -jk View Post
    DBR has a licensing agreement. We're good.

    -jk
    Good. I'm wondering though, what the situation would be were it not for that agreement.

  11. #11
    Quote Originally Posted by moonpie23 View Post
    also depends on who is more likely to fund the attorneys until the other backs off or settles....i'm no TM or Patent attorney, but i've been involved in numerous TM, SM and Patent situations where i found that a fat wallet has advantages...


    lawyer fun .
    Don't that fat wallet ALWAYS have advantages?

  12. #12
    Join Date
    Sep 2007
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    Undisclosed
    Also, my guess (and it is only that) is that there are federal and state laws which may govern (such as state unfair business acts and property laws).

    Good luck, sorry I have nothing better.
    Last edited by OldPhiKap; 09-04-2013 at 09:39 AM.
    I do not think that word means what you think it means.

  13. #13
    Join Date
    Feb 2007
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    Raleigh, NC
    Quote Originally Posted by moonpie23 View Post
    also depends on who is more likely to fund the attorneys until the other backs off or settles....i'm no TM or Patent attorney, but i've been involved in numerous TM, SM and Patent situations where i found that a fat wallet has advantages...


    lawyer fun .
    I almost didn't click on that link, but my moderator sensibilities kicked in and I had to verify that this link was appropriate for DBR.

    This link made my day. Thanks, moonpie!

  14. #14
    Join Date
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    New Jersey
    Quote Originally Posted by tommy View Post
    Hey guys and gals - l have a friend who needs some pretty basic information about trademark infringement. His website is being accused of infringing a mark, primarily by its very name, and he has a couple of questions about it that I don't feel comfortable answering, as a non-expert in the field. One question, which will probably be better to handle either via email or a phone call if we can exchange info first via a PM, is whether it seems like what he's doing is an infringement at all. Another, which I guess can be discussed publicly here generally is this: is the owner or holder of a mark able to enforce that mark (if enforce is the right term) against one purported infringer while permitting many others, who are utilizing the mark in exactly the same way, to continue to do so? In other words, does the holder of the mark have the right to selectively enforce his rights, or is there any kind of "waiver" or any kind of diminished protection for the holder if he knowingly permits infringement of it by others, and has done so for a period of years?

    Third, what types of damages might my friend be liable for in a type of situation like this, where the holder of the mark is not going to be able to show any actual monetary damages, any loss of income or anything of the sort, due to the existence and operation of my friend's site? Are there statutory damages? Based on what? I just don't know the terrain here at all.

    Thanks for any responses, either PM or on the public boards, that I can get.
    Hi Tommy. I am a practicing attorney who works in-house specializing in non-patent IP law including trademarks, copyrights, trade dress, etc. Feel free to ping me privately and I'll see how I can help.

    A trademark owner does not have to enforce rights against every party that might be operating in a way that is considered an infringement of rights. First of all, trademark cases are very fact specific so even minor nuances between different fact patterns may influence whether a party feels they have a strong case. So, although there is no rule that you have to go after everyone, and a party can selectively enforce its rights, the result of not taking action could effectively bolster the defense's argument that the owner's rights are weak or even unenforceable. The basic premise of a trademark is that it functions to distinguish the source or origin of goods or services from one party to another. The premise of trademark infringement is likelihood of consumer confusion when considering (a) the marks and (b) the goods/services. That's why something like Continental Baking and Continental Airlines can coexist - the goods/services are so different that consumers are not likely to be confused. However, at some point the fame of the mark crosses all boundaries and why no one in their right mind would claim rights to the mark Coca-Cola even for tractor parts. Trademarks are meant to protect consumers by distinguishing one product or service from another's product or service. The laws around trademarks should be viewed as consumer protection measures.

    Now, in your case, if your friend can prove that the "owner" of the trademark is not enforcing its rights to such a degree that consumers are unable to distinguish that party's goods/services from others because so many other parties are using the same term descriptively or generically, then that would be a strong part of the defense case. In other words, the defense would need to prove that the owner's mark no longer functions to distinguish its goods/services from others so its value or strength as a trademark is limited. But the onus would be on your friend to assert and make that case. But again, trademark cases are very fact specific so the mere fact that the owner didn't go after "everyone" is not necessarily dispositive. What is important is showing what the ramifications of that inaction were, namely, that consumers are unlikely to be confused as to the source or origin of your friend's goods/services vis-a-vis the owner's goods/services because the owner's mark has become weak and, in an extreme case, no longer functions as a trademark.

    Regarding whether the name Duke Basketball Report is actionable, I suspect those who run this website know the answer. There is a disclaimer on the front page that says "The Duke Basketball Report is an independent site and is not affiliated with or endorsed by Duke University or its athletic programs" and one of the moderators indicated that the name is used under license. If consumers are likely to mistakenly believe that this site is affiliated with, or sponsored by, Duke University then the University would have a case for passing off. I think it would be a strong case (and I suspect those operating this website did too which is why they have a license which probably stipulated the use of the disclaimer language). DBR's defense could be that there are other fan websites that use the name of the university or sports team and that consumers recognize that those sites are not authorized. In other words, consumers would not be mistakenly confused about the connection between the website and the University because they see it all the time in other instances. I suspect that defense would be fairly reasonable with respect to a fan website that merely provides information about Duke sports and allows members to have a discourse about such topics, but that defense might fall apart a bit when DBR started putting the Duke name on hats and apparel. It's a lot harder to make that defense with commercial activities vs. editorial/information services.

    I hope this helps. Ping me if you want to talk more.
    Rich
    "Failure is Not a Destination"
    Coach K on the Dan Patrick Show, December 22, 2016

  15. #15
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    Feb 2007
    Quote Originally Posted by Indoor66 View Post
    Don't that fat wallet ALWAYS have advantages?
    Not always.

  16. #16
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    Quote Originally Posted by tommy View Post
    My friend's problem is not exactly that, but not dissimilar really either. So let's take that as an example. What of Duke Basketball Report? Could the university force DBR to shut down -- or change its name -- for using the word "Duke" in its name? Why or why not? Anyone care to opine on that? Informed opinions could really be helpful actually. THanks.
    The Duck Shop on Ninth Street was originally called The Duke Shop. They had to change their name because IIRC the university asked them to, to avoid confusion as to who owned the store. (I used the term asked since I don't know the particulars. I'm sure it was a university attorney who "asked".)

    I'm curious about a more generic name, such as Carolina. Probably harder for the university to defend some uses, absent the use of one of the trademarked logos.

    Speaking of trademarked logos eight miles down the road, the "NC" used on their uniforms was also used on street signs to mark NC numbered routes (such as NC 751) circa 1950. To the lawyers in the forum, would this previous use prevent UNC from legal action, at least regarding non-sporting items?

  17. #17
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    Quote Originally Posted by DU82 View Post
    The Duck Shop on Ninth Street was originally called The Duke Shop. They had to change their name because IIRC the university asked them to, to avoid confusion as to who owned the store. (I used the term asked since I don't know the particulars. I'm sure it was a university attorney who "asked".)

    I'm curious about a more generic name, such as Carolina. Probably harder for the university to defend some uses, absent the use of one of the trademarked logos.

    Speaking of trademarked logos eight miles down the road, the "NC" used on their uniforms was also used on street signs to mark NC numbered routes (such as NC 751) circa 1950. To the lawyers in the forum, would this previous use prevent UNC from legal action, at least regarding non-sporting items?
    Geographic terms are treated somewhat differently under the trademark laws. They are generally not protectable as trademarks UNLESS the owner can prove that the term has "acquired distinctiveness." In other words, that when consumers see the geographic term in connection with the goods or services they view it as trademark and not merely as a geographic term.

    However, a party cannot obtain a trademark registration for a geographic term that is considered "primarily geographically deceptively misdescriptive." In other words, a mark that misrepresents the quality, function, characteristic, etc. of the goods or services because of the place identified in the mark. For instance, if North Carolina was known for a type of bread because of the wheat, yeast, and/or other natural resources only found in North Carolina, someone couldn't protect and own the mark Carolina Bread if, in fact, it was made in New Jersey without those North Carolina ingredients so that consumers would likely be deceived by the misdescription.

    Moreover, there are also things called geographic indication marks where you can only use the term if it meets certain geographic rules or standards. A good example is that only sparkling wine from the Champagne region of France are allowed to be called "champagne." See http://www.geographicindications.com/ and http://www.champagne.us/ for more on this concept.

    As to the use of "NC" described in your post, I would need more info. Trademarks are not protectable against everything else. They are not a monopoly right. It's a question of whether consumers are likely to be confused based on a comparison of the marks and the goods/services, but I don't think a past (and abandoned) use on a street sign would adversely affect their rights to enforce (assuming they had rights to enforce, which would only be limited to the stylization since the letter combo NC is a geographic term afforded little protection as a trademark). For instance, I believe there was a recent case that held that the letters OBX were not protectable or enforceable as a trademark without acquired distinctiveness, as I described above.
    Rich
    "Failure is Not a Destination"
    Coach K on the Dan Patrick Show, December 22, 2016

  18. #18
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    I moved. Now 12 miles from Heaven, 13 from Hell
    Quote Originally Posted by Rich View Post
    Geographic terms are treated somewhat differently under the trademark laws. They are generally not protectable as trademarks UNLESS the owner can prove that the term has "acquired distinctiveness." In other words, that when consumers see the geographic term in connection with the goods or services they view it as trademark and not merely as a geographic term.

    However, a party cannot obtain a trademark registration for a geographic term that is considered "primarily geographically deceptively misdescriptive." In other words, a mark that misrepresents the quality, function, characteristic, etc. of the goods or services because of the place identified in the mark. For instance, if North Carolina was known for a type of bread because of the wheat, yeast, and/or other natural resources only found in North Carolina, someone couldn't protect and own the mark Carolina Bread if, in fact, it was made in New Jersey without those North Carolina ingredients so that consumers would likely be deceived by the misdescription.

    Moreover, there are also things called geographic indication marks where you can only use the term if it meets certain geographic rules or standards. A good example is that only sparkling wine from the Champagne region of France are allowed to be called "champagne." See http://www.geographicindications.com/ and http://www.champagne.us/ for more on this concept.

    As to the use of "NC" described in your post, I would need more info. Trademarks are not protectable against everything else. They are not a monopoly right. It's a question of whether consumers are likely to be confused based on a comparison of the marks and the goods/services, but I don't think a past (and abandoned) use on a street sign would adversely affect their rights to enforce (assuming they had rights to enforce, which would only be limited to the stylization since the letter combo NC is a geographic term afforded little protection as a trademark). For instance, I believe there was a recent case that held that the letters OBX were not protectable or enforceable as a trademark without acquired distinctiveness, as I described above.
    The NC on the road signs back in the '40s and '50s was identical to the NC used on UNC's helmets this past Saturday (and of course, decades before.). I had thought that the "new" logo they came out with a few years back, with the ram, was due to difficulty TMing the NC.

    Thanks for the responses, I've always been interested in the subject. Perhaps law school after retirement. :-)

  19. #19
    Actually, the two NC monograms are different. I'm not a lawyer but I know a fair amount about North Carolina highway history.

    The NC on road signs goes back to about 1921, with the creation of the fourth State Highway Commission. This was the first such Commission to have any sort of power to allocate funds, and was when highways in NC were first numbered. I've seen maps from 1923 and 1924 with the NC monogram, sometimes showing spec road signs, diamond-shaped like today but with the monogram above the number, and otherwise with notations such as "[NC] 261" handwritten. (State highway maps were hand drawn until the early 1960s, and are quite handsome.)

    The use of the monogram seemed to die out in the 1980s. It should still be possible to find the monogram, on distance signs at intersections of secondary roads which receive far less maintenance than the primary highways. I doubt there are any monogram route markers left.

    The State Highway Commission/NCDOT monograms were always plain and black. The "N" in particular had vertical parts which were straight. OTOH uncch's monogram uses a wider "N" whose vertical parts are curved inward, the stroke width is noticeably thicker, and the monogram itself is usually baby blue with decorations such an outline, lettering and/or goat overlapping. That seems to be enough differentiation. Nobody owns the letters N and C, and I'm not sure simply overlapping them is non-obvious.
    Last edited by hurleyfor3; 09-04-2013 at 04:33 PM.

  20. #20
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    Quote Originally Posted by hurleyfor3 View Post
    Nobody owns the letters N and C.
    And yet Vanna White gets away with selling vowels. Despicable.


    (Very interesting post, thanks!)
    I do not think that word means what you think it means.

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