TheMadHopper wrote:My main problem with the situation, I guess is the way the law is structured in the first place. Hansen gets to file suit because of a word within a word? If I made a product called "Son" could I file suite against a company named "Johnson" because it had that word in it? "Vermonster" is what people from Vermont call themselves. It is not based off the word "Monster." It is based off the word "Vermont." I can see what you mean about the laws changing in five years, and they applied in such a manner as to cover all forms of the word, but that is rediculous. The issue that Hansen had with Rock Art seemed to be nit-picky and should I say asshole-ish.
The law actually changed three years ago, but we won't know what those changes mean legally for another few years.
In dealing with changes in federal law, that do not deal directly with government agencies, you are on your own with the new law until several cases have come out of the courts of appeal.
10 second version: Congress changes the law, someone decides it means X, and sues. Someone else says it means Y, or Z, another suit. Two or three years later the federal trial (district) court rules. This may or may not be published, but it has very little effect in law. Two or three years after that the appeal court (circuit) rules. There are a bunch of those, and decisions trickle out of most of them over time. If they disagree, sometimes the Supreme Court takes the case to decide what the new law means, or sometimes they work it among themselves, or sometimes the law means different things in different circuits (the worst outcome).
The reason I take trademarks to the mat and get a stong deal in cases like this is because I am worried that the law will turn out bad for the first holder--when I represent them.
Side note: when Congress has a new or changed law and people interact with the government about that law, then the federal agencies write very long 'regulations' that have the force of law most of the time and explain what Congress meant. The USPTO does not do this for trademarks because enforcement of rights rests with the trademark owner.
I represent a chain of gas station stores and we have a bunch of trademarks, one of which is for cups. I will call it "Cupster" for the trademark (it isn't, but this is an example).
I could have gotten it as a logo (fancy script, pictures of a monster looking out from the type, smiling kids or energy bolts), but after talking it over with the client we filed as a wordmark for the word Cupster. Wordmarks are harder to get and a lot of time lead to a fight.
We were only pouring soda pop, coffee, and koolaid type stuff when we filed, but I asked for class 32 without restrictions. We had some (pricey) issues and a fight, but we got the trademark and time went by. We wanted to be ready in case they started pouring fruit juice, or in case the state governments start letting stores pour beer, so it was worth it.
Someone else comes in and applies for a wordmark of "Cupalotster", also for all of class 32. I have to lead off with the nasty "Cease and Desist" letter. That way any deal we work out was "made to settle potential litigation" and that deal is not our standard way of dealing with infringers, which is a big difference legally as the next guy can't use the settlement against us in the next case.
In any event, I checked hard for wordmarks even somewhat a little close to Cupster before I filed, and I knew we were taking a bigger chance filing for all class 32, but the client agreed it was worth the risk and it paid off for us.
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