Trademark Musings

Thoughts on trademark issues by Laura Winston

Hashtag Hijinks

I was a little annoyed yesterday by the April Fool’s jokes I was finding over the internet.  My LinkedIn homepage suggested J.R.R. Tolkein and Sherlock Holmes as people with whom I may want to connect.  And the bar graph on my blog stats page said I got ten times the page views that I really received (if only!).  But trademark infringement humor?  Now that’s funny!

The background – there’s a rapper named Chris Webby, and there’s an internet awards show called the Webby Awards.  And a hashtag is – well, it has something to do with Twitter.   (You can follow me on Twitter @LauraWinston.)

The law-related gossip blog Above the Law posted a story entitled “Cease and Desist Letter of the Day: Who Owns Your Hashtag?”   The story described Chris Webby’s objection to the Webby Awards’ use of the hashtag #Webby, and linked to rapper Webby’s cease and desist letter which the awards Webbys had posted on Tumblr (which now is emblazoned with “April Fools”, but wasn’t until late yesterday).  I was falling for the story until I saw the letter.  Although it contained the language of a serious cease and desist letter (I wonder what real letter they copied), the giveaways were that (1) there was no address of the sending law firm (and I’d never heard of the firm, which turned out to be fake), (2) the registration numbers for US trademark registrations that rapper Webby claimed to own were too high (they were in the 4 millions and we’re only up to the high 3 millions, as only a trademark nerd like me would know), and some of the classes of goods in which they were ostensibly registered were ridiculous – class 4 (industrial lubricants and fuels) for example.

But I WAS fooled in this way – I believed that Above the Law thought the story was real when they posted it.  Turns out they were in on it all the time and had a second post late in the day to this effect.  My apologies to Elie Mystal, the Above the Law editor and author of the posts, for thinking he was that gullible.  

Of course, there is rampant concern about trademark misuse and infringement in social media among trademark owners and practitioners.  That’s why the last sentence of Above the Law’s reveal post has an ominous feel: “It might have been a joke today, but the first hashtag infringement suit is surely just around the corner.”

April 2, 2011 Posted by | Uncategorized | , , , , , | Leave a comment

I Can’t Give this Post an Apt Name

The words BigLaw and SmallLaw have meaning to toiling lawyers who over the years may have worked at 2000-lawyer firms, 200-lawyer firms and 2-lawyer firms. In my case, as a solo practitioner (and somewhat vertically challenged), I am a member of the SmallLaw community.

BigLaw signifies a firm with hundreds or thousands of lawyers, usually spread far and wide geographically and practice area-wise. SmallLaw indicates a small firm lawyers numbering in the single- or double-digits, often with a niche specialty or two.

PeerViews Inc. got itself U.S. trademark registrations for BigLaw and SmallLaw, both covering various email newsletters and blogs relating to legal practice and legal technology.  Then they objected to use of the term “Small Law” in the title of a post on the blog Lawyerist, demanding that Lawyerist take down the offending blog title within 7 days. The post was called “Above the Law Goes Small Law”, and was reporting on the fact that the popular, intelligently written though gossipy law blog was expanding its focus to include frequent posts about small law life as well as BigLaw goings-on.

Bloggers did not react favorably to PeerViews’ proprietary view.   For example, Carolyn Elefant, author of the solo lawyer bible Solo by Choice and the blog MyShingle.com, proclaimed in a blog title, “Memo to SmallLaw, You Don’t Own Small Law!”  She expressed concern about the chilling effect this could have on her blog and small law in general.

Not only did Lawyerist not cave in to PeerViews’ takedown demand, they took major steps to make use of BigLaw and SmallLaw safe for all humankind, including most if not all bloggers. Taking the position that “the terms BigLaw and SmallLaw and the phrases big law and small law belong to the public,” Lawyerist Media, LLC has now filed a lawsuit in federal court in Minnesota, seeking the cancellation of the registrations for BigLaw and SmallLaw on the grounds that they are descriptive terms.  Lawyerist also seeks a judgment from the court declaring that its use of “small law” in the blog post does not infringe PeerViews’ trademark. This blog has really put its money where its mouth is.

Bye now. I’m going to add  Lawyerist to my blogroll.

March 23, 2011 Posted by | Uncategorized | , , , , , , , , , , | Leave a comment

The Pepsi Firm

Years before I became a trademark attorney, I was in a restaurant in Washington D.C. where the menu stated in no uncertain terms, “We do not serve Coca-Cola products.”  I asked the waiter why not, and why publicize this.  He told me about the Coke police – investigators who visit restaurants, bars etc. and order Coke to see whether the establishments are actually serving Coke and not Pepsi. 

This early introduction to brand protection and enforcement has stayed with me.  So I was interested to hear, in a somewhat related story, that the law firm Day Pitney decided to show brand loyalty along with client loyalty and issued an email to the employees of the firm letting them know that because the firm represents Pepsico, Pepsi would now be offered at meetings at which beverages and snacks are provided.   This breaking news was reported on the blog Above the Law, which went on to note that Day Pitney will still be featuring Coke products in its vending machines.  Time for the Pepsi police to visit their attorneys?

April 3, 2010 Posted by | Uncategorized | , , , , | 1 Comment