ANOTHER EXAMPLE OF ABUSIVE TRADEMARK PRACTICES? THIS TIME THE TRADEMARK TROLL IS NOT CERTAIN

In the latest David against Goliath trademark story, The National Grange has apparently defeated Tyson Foods from adopting and federally registering the term grange as part of the phrase Grange and Grassland for a line of chicken,pork and beef products. Or at least that's how the website Oregonlive.com slants its story.

Tyson Foods (Goliath) is the largest meat processor in the world. And they are no stranger to trademark litigation. But this makes some of the statements in the story seem ill conceived at best. Mr. Ed Luttrell,(David) claimed that if Tyson Foods had been able to adopt and use the phrase grange and grassland they would have hijacked the goodwill that the Grange has built up in the term. And further, left unchecked. Mr. Luttrell was convinced that Tyson would have forced every local Grange to stop using terms like Grange barbecue.

I don't think so. Firstly, there is an accepted dictionary definition for the term grange other than the association of farmers. The word has an older meaning that refers to a farm or a farmhouse with other buildings. Indeed it was very likely this understanding of the word that influenced the founders of the Order of Patrons of Husbandry,the National Grange. I suspect that it was this more general use of the term grange that Tyson sought to play on when it adopted the term grange. Especially since the National Grange is rapidly losing membership- and a retail consumer would probably never have heard of the farmers association.

Of perhaps more importance to Tyson Foods, they had used the federal trademark application for GRANGE AND GRASSLAND as collateral by assigning it to a bank. To abandon their application would mean offering new collateral to the bank.

Be that as it may, Tyson did abandon their federal trademark application. And they left themselves vulnerable to a poorly told David and Goliath story.

FACE IT PSION: NETBOOK IS GONE

For all the ink that gets spilled( mostly by trademark lawyers) about the danger of a trademark becoming generic- the reality is that very very few trademarks are legally determined to be generic. Unfortunatley Psion, a Canadian computer company, has most likely dedicated the term netbook to those consumers shopping for a personal computer smaller than a laptop- a netbook.

Several years ago Psion introduced a small peronal computer that they apparently called a Netbook. The product languished and Psion eventually stopped selling it. In 2003 Psion introduced a new hand held computer. And they decided to call it the NETBOOK PRO. Apparently this product also met with limited success.
Some time after 2003 several other companies began to produce computers smaller than laptops. These computers were meant primarily for browsing the Internet. Larger than a cellphone but still very portable, they were called netbooks. And as a genus they have become wildly popular.

Fast forward to December 2008. Psion sent cease and desist letters to numerous folks engaged in manufacturing or selling netbook computers. Trying to put the genie back in the bottle.
IMHO it is far far too late for Psion to successfully assert any claim of right in the term netbook as a trademark. Why? Three reasons: Widespread adoption by the consuming public, a Wikipedia entry for netbook as a type of laptop computer, and most harmful to Psion, their own misuse of the term netbook.

In the October 2003 press release announcing the NETBOOK PRO Psion said: THE NETBOOK PRO is a unique.....; And further on The launch of the NETBOOK PRO signals... And even further on With NETBOOK PRO'S striking full-colour SVGA screen...

One of the basic rules of proper trademark use is that trademarks modify nouns. But Psion was guilty of using the term NETBOOK as a noun- that is to say as the genus rather than the species for computers. If one is using a brand properly it should be possible to remove the brand from advertising copy and have the copy still make sense. If one removes the term NETBOOK from Psion's press release one is left with gibberish.

I remember not once, mot twice, but countless times, advising clients: If you don't treat your brands properly how can you expect to get sympathy from the courts when you attempt to enforce your rights in those brands?
I am afraid Psion will now have to wrestle with an answer to that question.

IF ONLY JONES DAY HAD THE COURAGE TO SAY "WE SCREWED UP"

It seems safe to say that the mood of the country has changed. The causes are many- the economy, the election of Mr. Obama to name but two. Suffice it to say that we seem to be entering an era of humility and accountability.

If so then apparently the Jones Day law firm has not yet gotten the memo. As has been widely reported, Jones Day used trademark law in a shameful manner in an attempt to stop a small web site from disclosing publicly available information about some Jones Day lawyers.

Even though they received a barrage of bad publicity Jones Day did not drop the suit. However, on Friday Feb. 13th the Cleveland Plain Dealer reported that the law suit has now been settled. In what can only be characterized as a face saving measure(for Jones Day), the web site has agreed to make very modest changes in how it links to the Jones Day website. However, the web site will NOT need to change its deep linking methods- which is what the law suit was really all about.

How refreshing- and in step with the times-it would have been for someone from Jones Day to have simply acknowledged that " we screwed up". .
But no. From this vantage point it would seem that Jones Day still needs to maintain a masters of the universe posture.

WOULD ABRAHAM LINCOLN SHOP AT NORDSTROM'S? NOT IF HE SAW HOW THEY AND THEIR TRADEMARK LAWYERS BEHAVE

Today is Abraham Lincoln's 200th birthday. Every American citizen would be wise to read of his life. It should almost be malpractice for any American lawyer not to have a strong grasp of how Mr. Lincoln practiced law and politics.
Many biographies have been written. The bicentennial of his birth brings us A. Lincoln a biography by Ronald C. Whyte. The book is simply superb. It offers an in depth view of a truly great but truly human man.

A. Lincoln was a trial lawyer. But he was first an foremost an officer of the court. A man whose strongest loyatly was to justice not simply to win while sacrificing his own ideals. The Trademark Troll finds himself wondering, all to often, whether such men still are easily found in the legal profession.

This is especially true after one reads the story of what appears to be yet another example of trademark abuse by a large company and their lawyers.

Several years ago two small businessmen began using the trademark BECKONS for items of women's clothing. They sought to federally register their trademark. The United States Trademark Office granted their request. Here's where it gets wacky.

After the application for BECKON'S had been approved but BEFORE it had been officially published by the government, Nordstrom's filed to register the term BECKON for women's clothing. And for some reason the government attorney examining the Nordstrom's application overlooked the earlier application for BECKON'S. As a result BOTH got approved and the small folks had to spend time and money to get the Nordstrom's application disallowed.

As this was unfolding the Trademark Office realized their mistake and sought to cancel the Nordstrom application. But Nordstrom's, instead of graciously recognizing that a mistake had been made, resorted to the all too typical approach of the big guy. Let's outspend the little guy regardless of the merits of our case.

So now Nordstrom's joins the ever larger ranks of supposedly ethical businesses who must explain themselves after a torrent of bad publicity. In this case the Trademark Office too has suffered a black eye but they are limited in the corrective measures they can take.

As always when I learn of these situations, I find myself thinking Where were their lawyers?
It would have been painfully obvious to those lawyers that Nordtrom's was seeking to profit from a mistake.

Where is the pursuit of justice? Or an attempt to suggest that overreaching is not consistent with the incredible commitment to customer service that Nordtrom's has worked so hard to cultivate.

I can confidently say what A. Lincoln would have done. I would like to believe that The Trademark Troll would do the same. Come to think of it A. Lincoln would have much to say about Jones Day and its abuse of trademark law. How sad.

DON'T WORRY GOOGLE IF THE ECJ WON'T SAVE YOU THEN PERHPAPS PRESIDENT SARKOZY WILL

At times it gets uncomfortable out here on this limb. But The Trademark Troll is on record, not once,not twice, but thrice, in stating that Google will triumph in its efforts to sell adwords in France. A second French court has now ruled against Google's sale of adwords. In the most recent case two French travel agencies objected to the sale of their names to competitors. The court found Google guilty, and fined Google several hundred thousand Euros and 68K in court costs.

Presumably Google will appeal this case to the European Court of Justice, as they did when they lost a similar case to Louis Vuitton. And I predict that the ECJ will rule in Google's favor. As most all US courts have done.

However, even before the ECJ rules, President Sarkozy of France may have something to say about the matter. He has repeatedly stated that his job is to ensure that France remains competitive in the global economy. These two French decisions, especially the Louis Vuitton decision, put France out of step with the emerging consensus over the sale of words.

Google is the future. Does France want to stand in the way of the future?