When Sending A Bogus TM C&D, Don't Send It To A Lawyer Who Understands TM Law

from the just-a-tip dept

Thu, Dec 30th 2010 7:54am — Mike Masnick

Eric Goldman alerts us to a somewhat bizarre cease & desist letter sent to a law firm, Cobalt Law, which specializes in IP law. At issue was the fact that in a recent blog post on Cobalt's news blog, which analyzed a recent case, it used the logo of one of the companies involved in the case. That company, Career Step, whose logo I'll post here because it's what we're discussing, apparently had its own lawyer, one Erik Olson from the law firm Durham, Jones & Pinegar, send the cease and desist, claiming that this was trademark infringement:

Of course, using a logo in such a manner is not trademark infringement in the slightest, but it doesn't stop Olson from making claims that it is. The letter claims that this is "misappropriating Career Step's goodwill... and confusing the public. This will damage and likely has damaged, Career Step." Of course, I'd argue that having its lawyer send out such a cease & desist would likely do more damage than the original post.

Not surprisingly, Cobalt's response is short and to the point:

Dear Mr. Olson,

We are in receipt of your letter (below) in which you demand that we cease or you will sue.

We are a law firm; and we are reporting news in our blog. Clearly is that stated under the category on 'News' as you acknowledge in paragraph two of your letter.

We acknowledge that your client has trademark rights. However, protection for trademark rights under the Lanham Act is limited to protection against another's use of a designation to identify its business, or in marketing its goods or services in a way that causes a likelihood of confusion. Such trademark rights do not override First Amendment rights.

I'm guessing that will be the end of the discussion.

It's really unfortunate how the connotation of trademark as being "intellectual property" leads people to think it means they have complete ownership over the mark and can control any and all uses of the mark. That has never been the intention of trademark law, nor what the law actually says (even if it's expanded somewhat in that direction over the years). Such threats may act against those not familiar with the law, but it's surprising that the Career Step's law firm either did not try, or did not succeed in trying, to convince the company that issuing such a threat to a law firm (and one extremely well-versed in trademark law) would be a mistake.

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Filed Under: trademark
Companies: career step

27 Comments

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AJackson, 30 Dec 2010 @ 8:06am

Its about the Benjamins
Do you think the lawyer cared if the letter was an exercise in futility? (He probably cares now, though) Mr. Olsen, Esquire still got to bill for it. That's what most lawyers do, send out expensive threatening letters with no real basis in law. Of course, some clients insist lawyers do these things, despite being advised of its ineffectiveness. Some people pay people lots of money for advice they never follow. Idiocy abounds.
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- ElSteevo (profile), 30 Dec 2010 @ 9:12am
  
  Re: Its about the Benjamins
  The lawyer should have cared; a lawyer cannot just send out a letter because a client insists, there must be a basis in law or it's an ethical violation. The recipient may file a complaint with the bar association where Mr. Olsen practices.
  
  AJackson has apparently polled lawyers to know "[t]hat's what most lawyers do," otherwise the comment is one with no real basis in fact.
  
  There are a lot of idiots out there, and some of them are lawyers.
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  - ChurchHatesTucker (profile), 30 Dec 2010 @ 11:18am
    
    Re: Re: Its about the Benjamins
    "... there must be a basis in law or it's an ethical violation"
    
    And what are the odds of any action against said lawyer?
    
    Aside from the whole 'up against the wall' thing, of course.
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    - ElSteevo (profile), 30 Dec 2010 @ 11:38am
      
      Re: Re: Re: Its about the Benjamins
      "And what are the odds of any action against said lawyer?"
      Depends upon the jurisdiction and whether the disciplinary committee has any cojones.
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- Anonymous Coward, 3 Jan 2011 @ 10:26am
  
  Re: Its about the Benjamins
  I'm wondering what your basis is for claiming that most lawyers sent out expensive threatening letters with no real basis in law?
  
  In my years of experience sending and responding to trademark C&D letters, only a handful stand out as having no real basis in law.
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Anonymous Coward, 30 Dec 2010 @ 8:11am

You spelled intellectual pooperty wrong.
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- average_joe (profile), 30 Dec 2010 @ 9:47am
  
  Re:
  LOL!
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- Daemon_ZOGG (profile), 30 Dec 2010 @ 3:17pm
  
  Re: You spelled intellectual pooperty wrong. (anonymous coward)
  Yes. I agree as well. Pooperty is logically the proper spelling and pronounciation when refering to IP. ;) I now refer all those that disbelieve to, Stanford Professor and lawyer, Lawrence Lessig at (www.lessig.org). No, I'm not a spokes-person for Mr Lessig. But I do share his principal beliefs on IP/copyright law. I usually prefer "CopyLeft" in most respects. ;)
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Anonymous Coward, 30 Dec 2010 @ 8:15am

Many trademark C&D letters are sent by bounty hunters without a formal connection to the trademark holder. If they can get some response, they report it to the holder who pays a standard fee. I had a friend in Chicago who used to walk around looking in the windows of bakeries and noting which ones were using unlicensed Disney characters on their cakes. Letter sent, then a bill to Disney.

If there's real trademark abuse, that seems fine. But as you say, unsophisticated recipients may not know a legitimate (or even colorable) claim from a bogus one.
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- RD, 30 Dec 2010 @ 8:18am
  
  Re:
  "Many trademark C&D letters are sent by bounty hunters without a formal connection to the trademark holder."
  
  This is illegal unless the trademark holding party has authorized the "Bounty hunter" to represent them legally. Now, they could go hunting and just inform the trademark holder, and collect (if the holder would pay) but they cant send a legal C&D of a client they dont legally represent.
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  - Anonymous Coward, 30 Dec 2010 @ 8:21am
    
    Re: Re:
    Well, formal enough to send a letter claiming to represent the company. It's all pretty automated these days.
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    - abc gum, 30 Dec 2010 @ 8:52am
      
      Re: Re: Re:
      Do any of these letters originate in Nigeria?
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average_joe (profile), 30 Dec 2010 @ 9:45am

That has never been the intention of trademark law, nor what the law actually says (even if it's expanded somewhat in that direction over the years).

Nicely put. ;)
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Trademark Knitter, 30 Dec 2010 @ 11:21am

Courtesy
What, for me, is troubling is not the hubris with which the letter is written; we are sometimes at the behest of our client's requests and may find it politically difficult to deny them what they want. Also, we are sometimes out of our league when it comes to areas of the law. It may be somewhat ill advised to dive headlong into a demand letter with little basis for doing so, but such has happened to the best of us, and is part of the game we play.

What is troubling about this matter is that it suggests simple courtesy between lawyers has gone by the wayside. Many of us were raised with the understanding that lawyers should "never write a letter when a phone call will do; never file a lawsuit when a letter will do."

Surely, if the attorney was under pressure from his client to enforce the CAREER STEP mark, he could have picked up the phone and pleaded his case as a professional courtesy. It wouldn't have changed the law, but it likely would have changed the outcome. After all, the CAREER STEP logo was merely something to add color and a little context to an otherwise bland few lines of text, not a major usage.

Perhaps this serves as a reminder to all of us that small things can escalate unnecessarily when we don't exercise simple courtesy.

W
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- Anonymous Coward, 30 Dec 2010 @ 11:37am
  
  Re: Courtesy
  It's a form letter sent by a bounty hunter. Welcome to the 21st century, counselor.
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  - ElSteevo (profile), 30 Dec 2010 @ 11:42am
    
    Re: Re: Courtesy
    The 21st Century or even the 25th Century, isn't an excuse, Buck Rogers.
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- ElSteevo (profile), 30 Dec 2010 @ 11:39am
  
  Re: Courtesy
  Trademark Knitter is absolutely correct with respect to the way these things should be handled.
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- Free Capitalist (profile), 30 Dec 2010 @ 11:55am
  
  Re: Courtesy
  These days some law firms are openly trying to make a business of threatening to sue. At least in the past it seemed like lawyers tried to keep up a veneer of 'pursuit of justice', but now that even the charade is being dropped, is it any surprise courtesy falls also?
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  - Anonymous Coward, 31 Dec 2010 @ 10:01am
    
    Re: Re: Courtesy
    How about a disclaimer on a web site stating that any bogus take down notices will attract an immediate $100 fee for misuse of my site. A lawsuit in a local small claims court for wasting my time.
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- Anonymous Coward, 3 Jan 2011 @ 10:29am
  
  Re: Courtesy
  Interesting take. In my experience, a letter is the most common first communication, unless some there is some preexisting relationship.
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  - Trademark Knitter, 3 Jan 2011 @ 11:13am
    
    Re: Re: Courtesy
    Well, the saying "never write a letter when a phone call will do" means just that: sometimes a letter is necessary, but lawyers should at least consider picking up the phone. We often pick up the phone. Why not? It doesn't preclude writing a letter as a second step.
    
    Moreover, it keeps your letters from being posted on the Internet ;-)
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    - Anonymous Coward, 3 Jan 2011 @ 1:12pm
      
      Re: Re: Re: Courtesy
      Well, there's always the issue of communicating telephonically with a party you know to be represented by counsel.
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      - Trademark Knitter, 3 Jan 2011 @ 1:38pm
        
        Re: Re: Re: Re: Courtesy
        Not in this case. Counsel wrote to counsel (that's the whole point of the thread). No issue.
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Steve R. (profile), 30 Dec 2010 @ 1:54pm

Shotgun Justice
Anecdotally, it seems that lawyers just spew out massive amounts of garbage similar to using a shotgun. No real effort is made to actually do professional work. The recent example of robo signing in the foreclosure mess would be one example. Recently Bank of America foreclosed on some people who were apparently current on their mortgages.
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- Trademark Knitter, 30 Dec 2010 @ 2:16pm
  
  Re: Shotgun Justice
  I appreciate this dialog in that it informs how we as a profession are viewed by others, and it helps me to understand what work needs to be done. So, thank you. I do, however, take issue with the fact that lawyers take a shotgun approach to the practice of law. LOUSY lawyers, perhaps; lawyers who want to cut corners for a buck, maybe. Lawyers who are overworked and beaten down by over-zealous money-grubbing partners who only see dollar signs. But not this firm and not the many firms of my respected colleagues. The foregoing is not a sales pitch; Steve R is correct. The shotgun approach is very real, likely a result of the minimum billable hour method of charging clients, and it all points to the fact that we need a legal overhaul in this country (and an etiquette book at every desk). I take from this whole bit of silliness that we as attorneys need to take all the more seriously our legal, moral, and ethical mandates as officers of the court. And we need to work all the harder and convincing a public already skeptical of our profession that we are honorable in what we do by actually doing what we honor. The practice of law did not used to be a practice that made a person filthy rich. It was an honorable profession that gave an honorable wage for an honorable day's work. Somewhere between the go-go 80's and the Dot com boom, we started getting unheard of salaries and questionable quid pro quo deals. All we had to do was give up our social lives, scream louder, and bury the other side in paperwork (What Steve R calls "shotgun"). The transition from carbon paper to computers made burying someone all the more easy. I have confidence that clients will begin to push back,and to question their own corporate ethics in using attorneys of this ilk when results may be better achieved through reasonable discourse. Or maybe I should go back to my knitting full time.
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  - Anonymous Coward, 31 Dec 2010 @ 11:02am
    
    Re: Re: Shotgun Justice
    Or maybe I should go back to my knitting full time.
    
    If you can stand it, the world needs more lawyers like you. Stick to your guns.
    
    There are several of us in a few professions who have shared the feeling of being enslaved by greedy assholes.
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  - Anonymous Coward, 3 Jan 2011 @ 10:31am
    
    Re: Re: Shotgun Justice
    Unfortunately, lousy lawyers make headlines that laypeople read. Professional and courteous lawyers do not.
    
    Also unfortunately, many people are not inclined to take this into account when forming generalized opinions regarding groups of people.
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