Friday, February 02, 2007

Lawyer Jennifer gets testy!

Who is Jennifer, Spotty?

Well, grasshopper, Jennifer is a lawyer at Faegre and Benson here in Minneapolis (it looks like lawyer Jennifer is actually in F&B's Colorado office). She clouded up and rained all over another Jennifer, Jennifer Laycock, a/k/a "The Lactivist." The Lactivist's sin? Well apparently she is offering for a sale a t-shirt with the legend "the other white milk" to support her activism for breastfeeding mothers. In addition to being a subversive, and probably a godless communist, the Lactivist is stealing, according to lawyer Jennifer, the valuable property of the National Pork Board.

Oh, say it ain't so, Spotty! Oh, loathsome Lactivist!

That's what lawyer Jennifer claims, grasshopper. But the whole thing has a Gilbert and Sullivan patter song feel to it. [Spot clears his throat] When I was called to the bar . . . . Sorry.

Lawyer Jennifer says that the Lactivist, low and devious person that she is, is guilty, inter alia, of trademark infringement, trademark dilution, and unfair competition against the pure-as-the-driven-snow National Pork Board. THE NATIONAL PORK BOARD, can you imagine? This is obviously blasphemy, and it's probably treasonous as well!

Excuse me, Spotty, what does
inter alia mean?

Ah, grasshopper, it is a fancy way of saying "among other things," and it is often used by lawyers when they want to sound smart and not foreclose anything they might think up later to throw at the object of their cease and desist letter. But let's spend a moment looking at the three claims mentioned.

This won't take long, will it Spotty?

No, actually it won't grasshopper. Let's take the trademark infringement and trademark dilution claims first. In the abstract, the Lactivist could have done one or the other, but not both.

Trademark infringement occurs when an infringer adopts a trademark in the same or similar channels of distribution of similar products that is "confusingly similar" to the registered mark (which the NPB has; you can read all about it in lawyer Jennifer's letter), and which causes "a likelihood of confusion" in the minds of a potential consumer.

Pork and t-shirts? That seems like kind of a stretch, Spotty.

Yes grasshopper, it does! But lawyers are an inventive bunch. (Actually, the NPB does have a registration for The Other White Meat in Class 25, which is clothing.) But it's pretty interesting grasshopper, because the trademark application in Class 25 was made in 2005, and the trademark registration was issued in August of last year. Boy, lawyer Jennifer couldn't wait to take that sucker out for a test drive!

Now, in the trademark application, it was claimed that the National Pork Board started using The Other White Meat in Class 25 in 1997, but it's a little vague as to the date in that year. It would be great fun, boys and girls, to test that allegation to see if they can prove any 1997 use, because things you tell the Patent and Trademark Office in a trademark application are like they are under oath. Being inaccurate or fibbing is really a bad thing. It can affect the validity of your whole registration! Talk about a day-ruiner!

All of this aside, it seems pretty absurd to think that a t-shirt consumer would be confused between the Lactivist on one hand, and the NATIONAL PORK BOARD on the other. National Pork Board, Spotty says you're selling yourselves short!

But lawyer Jennifer says even if there is no confusion, there is dilution of the famous trademark owned by the National Pork Board. Talk about turning on a dime! There is a federal statute, boys and girls, protecting so-called "famous marks" against dilution even when there is no confusion. But lawyer Jennifer wants it both ways: it's confusing and it's not confusing. Paging Franz Kafka!

One of lawyer Jennifer's big problems, with either theory, is that The Other White Meat may be the marketing department's dream, but it's a pig--pun intended--as a trademark. Why? It is terribly, obviously descriptive. What the NPB is trying to do here is take a phrase out of the lexicon and make it property. Taglines like this make notoriously weak trademarks unless they have been used for decades. Spotty will bet you a box of kibble that somebody else used "the other something" before the NPB did. And NPB hasn't used the phrase so notoriously--certainly to the exclusion of everyone else--that it has acquired ownership of the combination of the words.

Descriptive marks are only entitled to the narrowest of protection, if they are protected at all. In this situation, the Lactivist is not even using the same phrase, and she isn't using it as a trademark for a t-shirt. It's just a descriptive saying for breast milk, for crying out loud.

Finally, the Lactivist is engaging in "unfair competition?" Spot knows that sounds crazy, boys and girls, but "unfair competition" is a holy phrase to trademark lawyers. It covers things like stealing the goodwill or good name of a party, or the palming off of goods of one party as the goods of another. It's one of the nuts-and-bolts things a trademark lawyer always claims in a cease and desist letter; it's a form of invocation, or maybe incantation.

Anyway, Spot is sure that the NPB is trembling before the commercial might of the Lactivist.

It gets a little "inside baseball" at this point, boys and girls, but the thing that lawyer Jennifer should have done was to seek the agreement of the Lactivist that putting the saying "the other white milk" on a t-shirt was not intended to trade on the goodwill of the National Pork Board or infringe its trademark. My guess is that the Lactivist would have agreed--probably would still agree--to that. The NPB would have demonstrated that it is policing its trademark, and it would avoid a potentially nasty infringement suit that it could well lose, not to mention the potential loss of the registration itself, on descriptiveness or other grounds.

The NPB and lawyer Jennifer are counting on the fact the the Lactivist probably cannot put up a fight. People like the Lactivist usually can't and don't.

Spotty, you have a real bee in the bonnet about this!

Yes, grasshopper, Spotty does. But the increasing rapacity of the trademark bar threatens both popular culture and the English language.

Update: Spot almost forgot to give a thump of the tail to Norwegianity for bringing this to Spot's attention!

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