Saturday, October 27, 2007

MADD v MAIA -- can non-profits use the Trademark Dilution Revision Act? This case seems to confound common sense

Today (Saturday, October 27, 2007) CNN reported that “Mothers Against Illegal Aliens” (MAIA) as an organization recently received a cease-and-desist letter from “Mothers Against Drunk Driving” (MADD). Copies of the letter exist on the web, for example, at this link.

Although MADD is a non-profit and an advocacy organization, it does have a registered trademark (and wordmark) for its name. It would appear at first glance that MADD is making use of the Trademark Dilution Revision Act of 2006. On June 28, 2007 on this blog I wrote some detailed comments on the literal text of the law, and one of the affirmative defenses appears to be “any non-commercial use of a mark” which would appear to apply here, at least from the viewpoint of common sense.

As CNN reported, a search of “Mothers Against” unmasks many advocacy organizations. Only a few of them have been served notice by MADD.

It also seems counter to public policy to allow one organization to monopolize a common English language phrase or word if only part of the mark.

That’s not to say that there aren’t some potentially reasonable uses the law in a prospective sense. I agree that I probably should not publish a book with a title ending with “… for Dummies” (as IDG publishers have long owned a famous trademark on that well-known series of “how to” books, and the use is clearly commercial and related to legitimate fiduciary concerns of the owners and investors). However, even this example shows a certain paradox. The whole concept of public “confusion” over the use of a mark seems founded in notions of, if not illiteracy, at least a parochial sense of knowledge derived from the past when so much knowledge was derived from social (and business and religious) power structures. In today’s individualistic online age, members of the public, in general, are much less likely to misinterpret the intentions and associations of a “good faith” mark like “Mothers Against Illegal Aliens” than they may have been a few decades ago. In this particular situation, MADD’s claims seem facetious and driven more by subtle politicking than real need.

It’s true, organizations do have a reason to be concerned that the public get the “messages” they are delivering for the benefit of dues paying constituents. There is a bit of financial accountability, after all, even on K Street. In the asymmetric Internet age, individual speech has become much more effective and politically influential (relative to that of well-funded organizations) than at any time in the past.

I’ve also heard of a few cases where people have been challenged when using their own name for a business mark (when it, by coincidence, matches another individual or sometimes a company). That again is a serious concern.

Wednesday, October 03, 2007

USPTO to have trademark exhibit

The United States Trademark and Patent Office has announced that it will hold an exposition in Alexandria, Virginia from April 10-12, 2008. Companies or other entities with registered trademarks may apply to become exhibitors. The applications will be evaluated as to how well the exhibitor would be able to educate the public on the value of brand and on the appropriate use of the trademark concept. Potential exhibitors would be notified Jan. 15, 2008.

There are future details and an application link on the USPTO home page.

The uspto website has, for a number of years, offered consumers the ability to check wordmarks online. There is an information page that indicates how recently the online database was updated. There are disclaimers to the effect that only a manual search at the office would be definitive. In practice, however, the “Search TM database (TESS)” and “Free Form Search” (Advanced Search) are quite effective and reliable. The searches do not appear to be case or punctuation sensitive, and one can find similar combinations of words. There is a problem when the distinguishing mark is at the end of a phrase (“.. for Dummies” witn IDG books). The site warns about excessive bandwidth use.

The USPTO also announced that it has published guidelines to improve patent quality. The announcement is here:. The rules appear to have expanded the patent application process and allowed more claims per application. Here is the link:

Another important link is “Claims and Continuation Practice: The Final Rule”

Update: Oct. 8, 2007

The Washington Post has an important editorial on patent law reform here, p A16 in print in today's paper. It says that Pharmaceutical companies are particularly vigorous in defending intellectual property patent rights, whereas software companies prefer a more liberal interpretation (which sounds like a paradox) in allowing weaker patents. Low quality patents tend to increase litigation.