Why Trademark Law Needs To Be Re-Visited By A Moron In A Hurry

from the perhaps-the-problem-is-with-trademark-law dept

Late Friday, the story broke that Apple had sent a trademark cease and desist letter to a site called PodcastReady, claiming trademark violations. The podcast community, not surprisingly, spent the weekend screaming in anger at this move. Of course, given other recent cease and desist letters from Apple for products that had "pod" in the name, this isn't that surprising. We've discussed in the past why it's unfortunate that people think of trademark law as "intellectual property law." It's really quite different than either patents or copyright -- which grant a more complete ownership over the idea or content. Instead, trademark law should be viewed much more as a consumer protection law. The purpose is to avoid consumer confusion -- where some ripoff company tries to sell you a fake "iPod." So, if there's no customer confusion, there should be no trademark problem. In fact, it was Apple in a recent case that helped highlight a great legal "test" for applying trademark law: the moron in a hurry test. If a moron in a hurry wouldn't be confused by the use, then there's no trademark violation. In this case, it would seem that Podcast Ready should be in the clear using that test.

However, there's a second element of trademark law that causes problems. Trademark law requires that the holder of the mark actively polices its use. That is, if you don't try to stop others who are using the mark from using it, you can lose the trademark. There are some reasons for this, but perhaps it doesn't really make sense any more. Because no one wants to lose their mark, it encourages lawyers to send a cease-and-desist in even the most borderline of cases. The "you must send a cease and desist as soon as possible" combined with the "moron in a hurry" test don't really work too well together, and create a ton of waste in the form of unnecessary legal fees. So, perhaps it's time to explore whether or not there's a better way to handle trademark law, focusing on the consumer protection side, but avoiding the over-active policing of trademarks.


Reader Comments (rss)

(Flattened / Threaded)

  1.  
    identicon
    jsnbase, Sep 25th, 2006 @ 6:56am

    A moron in a hurry

    You rang?

    It's frustrating enough to see laws passed only as a type of business weapon (i.e., the DMCA), but it's really demoralizing to see the tools of the legal profession used without regard to actual law.

     

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  2.  
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    Erstazi, Sep 25th, 2006 @ 6:58am

    ...

    We should apply this "The Moron In A Hurry Test" to more issues of this world. I really think it will help a lot!

     

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  3.  
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    Curious Moron, Sep 25th, 2006 @ 7:01am

    Trademarks

    Can somebody generate a list of 'pod' words that Apple has secured with trademark registrations? It would be interesting to see the list and it might show where Apple has rights and where it doesn't.

    In this case, Apple is the moron.

     

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  4.  
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    Spartikus, Sep 25th, 2006 @ 7:08am

    Yay stupid laws!

    Every time I see a story like this I want to send two identical letters: one to the corporation and one to the government that simply state, "STOP IT." with maybe like a "tm" after it haha...

     

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  5.  
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    ConceptJunkie (profile), Sep 25th, 2006 @ 7:29am

    The biggest problem is the law itself...

    ... which is often written by morons in a hurry.

    The extent to which trademarks are covered is pretty clear, but given the way IP rights are being totally abused by corporations (with the facilitation of Congress), I'm not surprised that companies are all gung-ho with the C&D letters. Nowadays a C&D letters is what a polite "How ya doin'?" to a stranger on the sidewalk was in the past... just a custom, practically a reflex.

    It seems to onus is entirely on the receivee of such a letter. He can probably ignore it, but entirely at his own risk. Sending out the letter, much like spam, costs little and carries no risk, and causes a lot of unsuspecting or unwary people to do what you want even if it's not in their best interest.

     

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  6.  
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    Anonymous Coward, Sep 25th, 2006 @ 7:34am

    Screw apple..

    I'll keep that in mind the next time someone mentions anything about buying a Mac..

    Keep your trademark apple and your products too

     

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  7.  
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    Lay Person, Sep 25th, 2006 @ 8:09am

    I think Apple made the first mistake...

    Apple made the first mistake of using the word pod.

    Theyu could have just as easily used box, vessel, or tree for the name. Yeah it's confusing but you cannot trademark a commonly used word.

    In fact this is unusual, I often see the word pod now and think it always has to do with an ipod. Actually pod is just a word like shoe.

    Good luck Apple, if this works try going after Red Delicious, Granny Smith, and Roman.

     

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  8.  
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    dffd, Sep 25th, 2006 @ 8:41am

    Arnt most lawers a moron in a hurry?

    Arnt most lawers a moron in a hurry?

     

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  9.  
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    C/D Letter Fatality, Sep 25th, 2006 @ 8:48am

    InTime vs. OnTime

    I recently got caught up in this C/D letter non-sense where the process is completely unfair and the opposing side has all the rights…

    I had taken the time & money and applied to register my unique mark. Then with one BS opposition letter that was sent to the USPTO, viola, I was in the middle of a $10k plus dispute - if I chose to defend my mark. I’m a very small start-up and don’t have $10k to give to an attorney for this matter that any Moron could have easily seen the visual and phonetic differences. We may share a word in our marks like this Apple example, but give me a break; overall they are different names and mine is completely red while theirs is blue and grey… To top it off, the USPTO only allows 30-days to response or the opposition is automatically awarded – what BS!

    I really wish there was a way to defend an opposition as easily as it is to oppose.

     

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  10.  
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    icepick314, Sep 25th, 2006 @ 8:57am

    "pod" owned by Apple?

    how about peapod?

    or just the word "pod"? what do we call a group of whales?

    this is plain dumb...

     

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  11.  
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    Beefcake, Sep 25th, 2006 @ 8:57am

    First, let's kill all the lawyers

    This is what happens when those who practice law make the laws and policies. As long as there's a conflict between the morons with somewhere to go and the active defenders, there's plenty of billable hours. Whether they conflict or not probably isn't even part of the equation.

     

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  12.  
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    RedStarFire, Sep 25th, 2006 @ 10:02am

    I(insert product)

    I'm surprised that those boneheads at Apple haven't started throwing out trademark cease and desist letters to the plathora of products with the "I" nameing scheme.

     

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  13.  
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    Annoying Bastard, Sep 25th, 2006 @ 10:07am

    Pod Policy

    What I think we need to do is shove Steve Jobs and the rest of the devoted "pod people" into the mothership and set it on a collision course with the sun.

    Problem solved. :-P

    (I'm working on a second plan involving getting Linus Torvalds and all the "penguins" on an iceberg bound for deep space.)

     

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  14.  
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    Anonymous Coward, Sep 25th, 2006 @ 10:14am

    PODS is in Trouble...

    If I were Portable On Demand Storage (aka PODS) I'd be starting to worry...

     

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  15.  
    identicon
    KC, Sep 25th, 2006 @ 10:31am

    Apple?

    I went to the Apple Store to buy an apple. What? There are no fijis there. That name is confusing, and if I were a fruit farmer, I would take Apple to court!

     

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  16.  
    identicon
    Someone Somewhere, Sep 25th, 2006 @ 10:41am

    Pods

    lets not forget all these

    POD
    Payable On Death (POD a band)
    Plain Old Documentation (POD in Perl)
    Professional and Organizational Development (POD)
    POD from Line6 musical instruments they actually registered the word POD!!!!
    Print on Demand (POD)


    PODS
    Principals of Database Systems (PODS)
    Pipeline Open Data Standard (PODS)
    Procurment Opportunity Delivery Systems (PODS)



    and what about topofthepods.com and podgallery.com and and and and

    How much money do the fruits oops I meant suits expect to spend? This only takes product away from the consumer by directing money into lawsuits instead of into the product.

     

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  17.  
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    sean, Sep 25th, 2006 @ 10:50am

    "If I were Portable On Demand Storage (aka PODS) I'd be starting to worry..."

    If I were them I would not they have been using that longer than the IPOD so send apple a c/d

     

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  18.  
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    CRASH RIP ROCK, Sep 25th, 2006 @ 11:35am

    PODS?

    CANT WE ALL JUST GET ALONG?

     

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  19.  
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    M.Banzai, Sep 25th, 2006 @ 12:02pm

    EPods have rights too..

    EPods (Encephalopods) have rights too....
    Just not attorneys to C&D Apple from using their family name!

     

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  20.  
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    jsnbase, Sep 25th, 2006 @ 12:17pm

    What about the potato people in The Dark Crystal?

    Weren't they called ipods? They certainly should have been.

     

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  21.  
    identicon
    Anonymous Coward, Sep 25th, 2006 @ 1:00pm

    Re: Pod Policy

    Yeah, you are an annoying bastard. you have clearly never used anything other than winshit. screw you.


    Anyway, I am going to grab my ipod and go out in my icar for a spin around the city (iTown, Indiana). Also, my escape pods are under attack from Apple.

     

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  22.  
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    STJ, Sep 25th, 2006 @ 2:06pm

    Actually, pod refers to a group of like items, such as a pod of seeds(peas). So a POD of music, which is READY on demand, and is broadCAST, can be called PODCASTREADY, and not be infrenging on copyright laws. If anything, nature has been using "pods" for thousands if not millions of years. Apple should be paying it for the use.

     

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  23.  
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    Matt Lamel, Sep 25th, 2006 @ 2:36pm

    irresponsibility

    As an IP practitioner who occasions this blog, i am repeatedly discouraged at the creators irresponsibility in posing legal issues without any research, authority or even a general knowledge of intellectual property. Briefly, consumer protection is but one underlying policy of trademark law. The other major policy is one of source-identification; the theory that allowing an entity to trademark a name, device etc., will promote investment of goodwill to maintain a high value of the mark. It is true that infringement is generally a question of "consumer's likelihood of confusion," however additional grounds of enforcement lie in dilution (e.g. tarnishment, blurring) and unfair competition.

    Even assuming the average consumer would not be confused by "pod" in use with another product, it is believed that such connotation: (a) may cause a lessening of the value of the mark if or instance "pod" is used in conjunction with a lesser quality product; or simply that "pod" will less likely be associated with apple and reduce the tm's value to apple, thus reducing impetus to input good will.

    i strongly encourage posters to write responsibly as this blog is uniformly ignored by any reader with even a basic legal knowledge

     

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  24.  
    identicon
    Matt Lamel, Sep 25th, 2006 @ 2:36pm

    irresponsibility

    As an IP practitioner who occasions this blog, i am repeatedly discouraged at the creators irresponsibility in posing legal issues without any research, authority or even a general knowledge of intellectual property. Briefly, consumer protection is but one underlying policy of trademark law. The other major policy is one of source-identification; the theory that allowing an entity to trademark a name, device etc., will promote investment of goodwill to maintain a high value of the mark. It is true that infringement is generally a question of "consumer's likelihood of confusion," however additional grounds of enforcement lie in dilution (e.g. tarnishment, blurring) and unfair competition.

    Even assuming the average consumer would not be confused by "pod" in use with another product, it is believed that such connotation: (a) may cause a lessening of the value of the mark if or instance "pod" is used in conjunction with a lesser quality product; or simply that "pod" will less likely be associated with apple and reduce the tm's value to apple, thus reducing impetus to input good will.

    i strongly encourage posters to write responsibly as this blog is uniformly ignored by any reader with even a basic legal knowledge

     

    reply to this | link to this | view in thread ]

  25.  
    identicon
    Beefcake, Sep 25th, 2006 @ 3:12pm

    Re: irresponsibility

    You missed the point. Must be a lawyer. Since the post clearly states "We've discussed in the past why it's unfortunate that people think of trademark law as "intellectual property law," you must be a lawyer in a hurry too (where have I heard a very similar phrase before?).

    But since you want to perpetuate the confusion of the issues, I'll go along. If you don't want your trademark diluted, try not using letters of the alphabet coupled with common words as your brand name. It shouldn't be approved anyway, but that's a whole different side of things.

    The point is that regardless of the purpose of a trademark, it's stupid to think you can take the phrase "iPod", slap it on a bunch of music players, and think you can shut down anyone else using "pod". If you want an undiluted brand name, don't use an already diluted term. In-no-vate.

     

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  26.  
    identicon
    Matt Lamel, Sep 25th, 2006 @ 3:35pm

    Re: Re: irresponsibility

    It is sad when companies send out cease and desist letters en masse - but there is a lot to lose by apple. The same renegade issue has occurred many times in the past, most notably with Mattel's "barbie" -- this can even be broadened to the more serious issue of mass cease and desist letters written where content owners are unaware of tm fair use ... there are many websites devoted to providing quick assistance to companies/content owners in these situations and how to respond to cease and desist request ... how effective they are, i have no idea.

    ill admit, i really have no idea why there is a focus on why tm law is considered IP... the fact that this is true is simply because a trademark is just another intangible property right that is artistic/inventive in nature -- as opposed to real property or other rights .... other than that, there is very little similarity between patents/copyrights and tm's as viewed by the law -- tm is derived from the fed. govt's right to regulate interstate commerce, while patents/copyrights stem from the authorship clause, 1.8.8 ---

    the fact that "pod" is a known word means very little as far as protectability -- there are tons of known words or minor variations which are very strong TMs: "apple," "speedo," "greyhound," "burger king" --- these are generally termed arbitrary or suggestive and generally have no greater likelihood of being diluted than "pod" --- im sure most users of pod, to which cease and desist letters were sent, had at least a minimal intention of suggesting some mental connection with IPOD --

     

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  27.  
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    McBrat, Sep 25th, 2006 @ 4:24pm

    Law make sense?

    This part of law needs to take into account the product line. For example McDonald's sued a guy names McBratnie because he called his soccer team McBrat's. The said it was using the trade mark of Mc. This makes me wonder if I am going to get sued for using that name also.

    Personally, I don't get all the hype about IPOD it is just an expensive MP3 player. It is like there computers, OK for high school. But not the real world.

     

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  28.  
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    Beefcake, Sep 25th, 2006 @ 4:51pm

    Re: Re: Re: irresponsibility

    So if Apple has a legitimate interest in pursuing C&D requests against people using "pod", why hasn't Coca-Cola gone after other people using "cola"?

    Because they don't have a proverbial leg to stand on. Neither does Apple.

    You are correct in that iPod is no more diluted than Greyhound; my point is that anyone can use either of those terms so dilution is natural. They are words which exist in the English language. If you want a solid trademark, try inventing a new word which evokes what you want to associate with your brand. Like "aspirin". Right idea, but the owner of that one didn't fight hard enough to maintain that trademark and lost it. The other extreme.

     

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  29.  
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    Angus, Sep 25th, 2006 @ 5:02pm

    Apple owns the whales then?

    Apple made the mistake of not stamping on podcast immediately. As things stand they risk losing the benefits of brand goodwill for the sake of pursuing brand purity. IMO the desire to TM 'ipodcasting' is a weird one. Reminds me of the problem with Deckers' 'Ugg Boots' - it is a common term in Australia, but Deckers thought they could get away with TMing it: http://en.wikipedia.org/wiki/Ugg_boots It would be nice to see TM law changed so as to relax such strident enforcement.

     

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  30.  
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    Mike (profile), Sep 25th, 2006 @ 10:25pm

    Re: irresponsibility

    however additional grounds of enforcement lie in dilution (e.g. tarnishment, blurring) and unfair competition.

    Indeed, this is true, but I don't believe that's a policy issue that makes much sense. Without confusion, there shouldn't be much dilution. And, I would think that dilution is simply a *business* and *marketing* issue, and there's no real reason to protect it using trademark law. That is, if you allow your trademark to be diluted, then that suggests you have done a bad job on the marketing side with your brand. Giving it extra protection in the form of trademarks actually can hurt companies by making them less active in protecting their brand from a marketing standpoint.

    So, I stand by the original point that the real purpose of trademark law was originally and should remain a consumer protection issue, concerned with confusion. Dilution protection isn't necessary.


    i strongly encourage posters to write responsibly as this blog is uniformly ignored by any reader with even a basic legal knowledge


    Hmm. I wonder how you know how people with legal knowledge treat this website. Considering the number of lawyers who link to us, submit stories and comment here (in support of us) on a regular basis, I believe your statement is false. Obviously, some disagree with us (as you do), but to claim that we're uniformly ignored is provably false (not to mention petty and uncalled for).

     

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  31.  
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    Lay Person, Sep 26th, 2006 @ 1:06pm

    Re: irresponsibility

    Who cares Matt?

    Your posting is way overdone. We don't care about the policies or what is actually contained therein, nor why.
    Without you pointing out your legal knowledge on this matter, most of us understand that what Apple is trying to do is a joke, and only an attorney would take it this seriously!

    None of the aforementioned changes the fact that "pod" is an ordinary word and that trying to defend oneself from poor foresight is a losing battle. In fact, Apple should be sued for trying to deceive the English language.

     

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  32.  
    identicon
    Beefcake, Sep 26th, 2006 @ 2:55pm

    Re: Re: irresponsibility

    Sheesh Mike, where've you been? I've been in here occasionally defending your honor for hours now!

     

    reply to this | link to this | view in thread ]

  33.  
    identicon
    Small Business, May 24th, 2009 @ 6:42am

    APPLE et al

    Hi,
    I am not a lover of LARGE multinationals, and especially the (reported) manner in which the bully small business. But, in order to present a fair picture I would like to relay my experience. I am bringing a product to market which includes certain letters which make up part of a trademark registered by a world wide, billion dollar comapny. They objected, which caused me a delay, but upon hearing my story we came to an agreement which did not cost me a penny and leaves me free to use the original product name which I had chose.
    If they are being ripped off or taken advantage of they bite, but in my case I have no complaints!

     

    reply to this | link to this | view in thread ]


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