Friday

IT'S OFFICIAL. 99% OF PATENT ATTORNEYS SHOULD NOT PRACTICE TRADEMARK LAW

OK its not really official. But if lawyers were forced to honor the maxim " first do no harm" then most patent attorneys would not go near a trademark matter- let alone blog about it.
Why do I say this? Because the patent attorney author of one of the more popular IP blog sites has put his literary/ legal foot in his mouth. As is all too common. And no I am not going to name the blog site.

It all started with Bill O'Reilly. Apparently our boy Bill discovered that the owners of the term AMERICAN IDOL were upset that a so-called gentlemen's club has adopted the term STRIPPER'S IDOL for a contest involving amateur women baring their breasts. He brought some lawyer's on his show who opined " how could anybody be confused?".

This was reported by the patent attorney who chastised the attorneys for their misunderstanding of trademark law. He then went on to glorify the trademark dilution doctrine at the expense of traditional trademark likelihood of confusion analysis. Trademark dilution is the will o' the wisp of trademark law. The number of factual settings in which it should be preferred over traditional trademark law doctrine is a very very small number.
When I gently pointed this out to him in a comment- he sort of agreed. But then he cited several old trademark dilution cases- all overruled by amendments to federal law that are now several years old- to suggest that niche fame could still be the basis for bringing a dilution claim.

It's not just that every area of intellectual property law is so volatile that it is impossible to be conversant with copyright, patent and trademark law. It's more subtle yet more fundamental.

IMHO there is a linear quality to patent matters. A quality that is harmonious with the scientific method and the personality of the engineer. But trademark law is notoriously amorphous, uncertain and ambiguous. These are characteristics that grate against the certainty and digital duality of science and technology.
So when lawyers with technical training confront the ambiguity of trademark law they seek to impose a certainty on what cannot be certain. In doing so they run the risk of doing a disservice to their clients and until they get their butt kicked by a trademark specialist they may live in a fools paradise of misplaced expertise.
Put more crudely- if you get a patent attorney to speak candidly- she will tell you that trademark law is easy -something to do once in awhile- but patent law is the really hard stuff. It's that attitude, combined with a linear view of the world, that can cause all sorts of mischief.

Some day there will be a survey to support the musings of the trademark troll.

0 Comments:

Post a Comment

Links to this post:

Create a Link

<< Home