June 26, 2003

Clue by Four - Apply Topically as Needed

The author of There Is No Cat got a cease and desist letter for using the term "clue by four," in which some consulting firm has registered a trademark interest. Said consulting firm claims that the passing use of the phrase dilutes his trademark.

Three problems for the registrant:

  1. He will have to prove that his mark is "famous." Coca-cola is a famous mark, and everyone knows the company it signifies. "Clue by four" is a witty turn of phrase used by many far before the registrant tried to lock it up, and no one - I mean not one single soul - who's not a personal friend or client of the registrant is likely to have any clue that his company uses the mark in commerce.
  2. The consultant uses the phrase not even once on his web site. So not only is the mark NOT famous, he's not even currently using it in trade. That might subject him to a nasty registration challenge.
  3. In order to win a dilution claim, he would have to prove that he was actually damaged by the allegedly infrgining use - in other words, diverted sales, loss of value of the mark, or soemthing similar. One passing mention on a weblog doesn't cut it.

So... nice try, thanks for playing, you've won a DVD of "Jackass" as your consolation prize.

(It turns I could throw stones at the registrant from my law office - and wouldn't that be a fun way to while away an afternoon?)

Also from Ernie. I should pay the man royalties.

UPDATE: Here's another c&d recipient.

Posted by wasylik at June 26, 2003 10:25 PM | TrackBack