Intel Refiles Questionable Trademark Lawsuit Against Newsletter About Latin America

from the seriously? dept

Mon, May 17th 2010 6:46pm — Mike Masnick

Late last year, we wrote about the latest in an unfortunately long line of overreaching trademark lawsuits filed by Intel. Intel tends to act as if no one else can use the word Intel at all, leading it to get involved in legal disputes with companies in industries about as far away from Intel's business as can be -- including a travel agency and a maker of jeans. The dispute last year, was focused on the small producer of a newsletter about Latin America, which used the domain name LatinIntel.com. There was no way anyone would be confused by this site or think that it was somehow associated with Intel, even using my favorite "moron in a hurry" test.

So, we were happy, earlier this year, to get a report that Intel had dropped the lawsuit. Except... that turned out to not be exactly true. Intel got in touch quickly to insist that they had only dropped it because they planned to refile the lawsuit with much more detail to make their case. What Intel left out was the pretty serious skepticism the judge had expressed concerning their original filing:

The key lines here being:

It really is lacking in enough specificity which would demonstrate that there was confusion or that you're even addressing the same markets. I mean, my understanding is that there may be no customer overlap at all in connection with this.

Intel, of course, shot back with the claim that this has nothing to do with likelihood of confusion, but it was really about dilution. Dilution is a more recent element of trademark law, which was not considered applicable for quite some time, but today has become more widely accepted, and keeps expanding in dangerous ways. It simply goes against the basic concept of trademark law -- which is supposed to be about protecting consumers from buying a product that is falsely labeled. That's why trademark law is limited to the areas where your trademark is actually being used in commerce. The judge's point that there is no customer overlap should be all that matters here. At that point there is no trademark issue. At all.

But Intel has, in fact, now refiled the lawsuit, and tries to get around this claim by pointing out that both Intel and this newsletter have customers that are Fortune 500 companies. Seriously. And then it still claims there is customer confusion, despite the judge making it pretty clear that he didn't believe there was any customer confusion at all:

I asked the spokesperson from Intel who had contacted us about the last post if he could offer an explanation of why it made sense for Intel to continue to pursue this lawsuit, and I got back the basic explanation for why dilution is considered trademark infringement -- which didn't answer the question I was asking. But it appears that Intel's definition of dilution goes way beyond even the current (already troubling) concept of dilution in trademark law. The way Intel sets it up, no one can use the word "intel" even if it's already a widely generic term in a totally different industry (as is the case with the newsletter). That makes no sense.

While I'm sure Intel's lawyers would claim that they have to defend their trademark to avoid it being declared generic, that's also a misrepresentation of trademark law. You do have to defend, but only in cases where there's actual confusion or actual risk of dilution. Someone doing business with a term that is generic in that industry, which is about as far away from Intel's industry as is possible, is not doing any harm, whatsoever, to Intel's mark. Intel should have just dropped the case and left it alone.

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Filed Under: confusion, dilution, trademark
Companies: intel, latintel

18 Comments

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Anonymous Coward, 17 May 2010 @ 7:53pm

'only in cases where there's actual confusion or actual risk of dilution' - and how do you determine that? do you wait until there is certain confusion or certain dilution, or do you take action before it becomes an issue? you seem to be suggesting that intel should just wait until their mark is diluted before doing anything. it seems pretty simple, and yet you once again find something 'troubling'. perhaps you should see a doctor about this.
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- Anonymous Coward, 17 May 2010 @ 8:21pm
  
  Re:
  Hint: If your trademark is so unremarkable that your computer processors will be confused with a latin newsletter, you have bigger problems.
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  - Anonymous Coward, 17 May 2010 @ 8:48pm
    
    Re: Re:
    "sir, would you like to advertise in the intel latin american newsletter" "will all the business get a copy" "oh yeah, we have wide distribution" "well, we work with intel, so yeah, sure, where do i send the check". case closed.
    [ link to this | view in chronology ]
    - Any Mouse, 17 May 2010 @ 9:15pm
      
      Re: Re: Re:
      Yeah, keep building up that house of sticks. We'll keep burning it down. It's the Latin Intel Newsletter, not the Intel Latin American newsletter. Or are you really that big a moron?
      [ link to this | view in chronology ]
    - Anonymous Coward, 17 May 2010 @ 9:32pm
      
      Re: Re: Re:
      Wow. I didn't know it was possible to be more oblivious than the moron in a hurry.
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      - Anonymous Coward, 17 May 2010 @ 10:12pm
        
        Re: Re: Re: Re:
        The best part is that he's not even in a hurry. Or he might be -- when you consider how long it takes for him to type up his usual "the masnick" rants.
        [ link to this | view in chronology ]
        
        Anonymous Coward, 18 May 2010 @ 3:14am
        
        Re: Re: Re: Re: Re:
        hi mike. peek at many ip addresses recently?
        [ link to this | view in chronology ]
        
        Anonymous Coward, 18 May 2010 @ 9:38am
        
        Re: Re: Re: Re: Re: Re:
        Hi TAM. Peek at your hypocrisy recently?
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- athe, 18 May 2010 @ 1:12am
  
  Re:
  Troll much?
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techflaws.org (profile), 18 May 2010 @ 2:11am

generic
So how come a generic term like "intel" is even granted as trademark? Sounds very much like "windows" to me and that was bull from day one.
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the trademark troll, 18 May 2010 @ 4:32am

Dilution is Dumb
The simple truth is that the trademark dilution doctrine has never been accepted by judges. Because companies like Intel overreach to monopolize the English language, conservative judges have often ignored or misread the dilution doctrine to deny spurious claims. Like this one. Go play in traffic with AMD.
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sarcasm in a hurry, 18 May 2010 @ 5:01am

So, I was in the market for a new processor and thought I'd look at what Intel had to offer. I found one for a really low price but it turned out to be a newsletter. Man did I get ripped off. I'm so upset about this, I could just burst.
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Richard (profile), 18 May 2010 @ 9:04am

INTELlectual Property
I presume it is now illegal to talk about intellectual property since this is a violation of intel's intellectual property!?
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JJ, 18 May 2010 @ 10:13am

What's next?
Is Apple Computer going to sue apple farmers for trademark dilution?
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- Anonymous Coward, 18 May 2010 @ 10:52am
  
  Re: What's next?
  no, but apple computer had to make a deal with apple records before they could move forward.
  [ link to this | view in chronology ]
Ben, 23 Aug 2010 @ 4:47am

property intellect
you'll be pleased to know that I too have now fallen victim to Intel's bullying tactics! New Zealand lawyers acting on behalf of Intel Corporation are now forcing me to change my trading name and destroy all content - I'm a one-person consultancy business that deals in strategic property management but I'm fighting back... not sure how long it will last until I will be 'forced' to 'obey'!
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Mike, 19 Sep 2010 @ 10:43pm

Intel threaten one more company that has intel in the name
Intel is playing the same bullying tactics on another company that has intel in its name. Actually the basis for intel in that name was from intelligence and that's how the company was formed and Intel is now threatening these folks too. Is there some thing these companies can ask Intel for the damages it is causing to rename the company and rebrand the products. What would be the damages that could be claimed for renaming and rebrading?
[ link to this | view in chronology ]
Mike, 19 Sep 2010 @ 10:44pm

Intel threaten one more company that has intel in the name
Intel is playing the same bullying tactics on another company that has intel in its name. Actually the basis for intel in that name was from intelligence and that's how the company was formed and Intel is now threatening these folks too. Is there some thing these companies can ask Intel for the damages it is causing to rename the company and rebrand the products. What would be the damages that could be claimed for renaming and rebrading?
[ link to this | view in chronology ]