Re[2]: Trademarks

Subject: Re[2]: Trademarks
From: "Arlen P. Walker" <Arlen -dot- P -dot- Walker -at- JCI -dot- COM>
Date: Mon, 6 Nov 1995 14:24:00 -0600

Could you kindly site a clear statement by someone who ought to
know that indicates anything of the kind? Trademark law protects
the trademark holder from having his name ripped off by competitors
and imitators; I've never seen anything but folklore that indicates
that trademark law takes precedence over the First Amendment.

Sorry it took so long to reply, Robert, but in deference to your request I
waited until our IP (Intellectual Property) lawyer and I had time for a chat.
I'm afraid he pretty much confirmed my understanding, however.

To deal with your last statement first:

Q: So someone using a registered trademark as a generic in a magazine article
(person and magazine being unconnected with any of the products) still can't use
the first amendment as a defense?
A: No.

First, let me correct a slight misunderstanding. I said that using registered
trademarks as generics was illegal. It's clear that brought images of jail time
to your mind, and I assume to others as well. I apologize for not being as clear
as I should have been. Illegal is not a synonym for criminal. Criminal is a
subset of illegal; there are plenty of laws which are only enforceable through
civil suits, with no provision for jail time for infractions.

What *IS* true is that companies have to "defend" their trademarks,
which they do by sending "lawyer letters" to people who use their
names in a way they consider out of bounds. But I have never heard
of anything actually HAPPENING. A company receives a lawyer letter;
they respond with a "thank you for the information, we will keep
it in mind in future editions of the document," and then everyone
goes back to sleep.

Is there an actual penalty for claiming that UNIX is a trademark of
AT&T Bell Laboratories? What, exactly?

The "lawyer letter" is a "cease and desist" letter. It is true that this is as
far as the practice usually goes. "They don't prosecute me, therefore it's OK
for me to break the law," is a sentiment that I find rather surprising coming
from you, Robert. You're usually more solidly connected to a right/wrong honor
code than that.

The letter is the first step, not only because it's the cheapest way to obtain
relief, but also because defiance of it makes the follow-up lawsuit easier. Yes,
there is no jail time involved for trademark violations, even by a competitor
who blatantly rips off your mark. There are provisions for damages, however, if
you care to try to prove them (if the magazine article is a comparative review
of similar products and they are all called by the trademark of one, you might
have a good case, other third-party type infringements are more difficult to
prove damage). At the least you can apply for injunctive relief, resulting in a
contempt of court citation if the subject still doesn't stop doing it.

Yes, the use of registered trademarks is regulated by law and improper use is
illegal (though not criminal). Since the enforcement of trademark law is a civil
matter, it depends on the trademark holder's attitude. Some will have a looser
attitude than others. A certain pattern of defense of trademark is required for
a company to maintain ownership of it (formica, cellophane and aspirin are all
examples of this failure). Companies are free to go as far beyond that minimal
point as their budget allows, while staying within the law. Prosecution of
infringements depend upon many things, not the least of which are the cost of
the lawsuit and the pigheadedness of the holder.

As a related note, can I say that if "It's illegal, but since they won't
prosecute me for it, it's OK" has become the standard for the Right Thing To Do,
we're all in trouble?

Seems to me we just had a discussion about copyrights which ended with the
sentiment that even though no money was being made, it was still Wrong to
appropriate copyrighted material. Isn't a bit hypocritical to take that point of
view about what *we* create, yet deem it perfectly OK to appropriate registered
trademarks for generic use, simply because no money is being made from that
practice, either?

Now, since we've come a little closer to giving actual legal advice, I should
<Disclaimer: This information was obtained through a conversation with a lawyer
certified to practice patent and trademark law. It is being presented in this
form by someone who is not, and since that someone is also a human being,
mistakes of commision and omission are possible, though none are knowingly
present in this message. Get your own lawyer's advice on the topic before going
to court.>

Have fun,
Chief Managing Director In Charge, Department of Redundancy Department
DNRC 124

Arlen -dot- P -dot- Walker -at- JCI -dot- Com
In God we trust; all others must provide data.
Opinions expressed are mine and mine alone.
If JCI had an opinion on this, they'd hire someone else to deliver it.

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