There Is No Cat

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Thursday, June 19, 2003

Adventures in The Trademark Zone

Well, I got a very interesting e-mail today. Some time ago, I posted something to There Is No Cat about how I convinced David Weinberger, one of the authors of The Cluetrain Manifesto, to alter the design on JOHO The Blog to accomodate colorblind readers such as myself who had trouble distinguishing between his regular text and his links. Given that David was one of the Cluetrain guys, I thought it would be cute to point out how receptive he was to my suggestions by saying that it didn't take a clue-by-four to convince him.

Did you know that Clue-by-Four™ is a trademarked term?

I didn't, until I got a cease and desist e-mail today from Joel McClung, the President of Intrax, Inc., the owner of said trademark. Mr. McClung asked me to alter my post to include his trademark notice or to stop using the phrase or else he would sic his lawyers on me.

I told Mr. McClung to pound salt. (Well, I was more polite than that, but I made it clear I had no intention of complying with his request.)

But before I did that, I took a trip through the vagaries of trademark law.

I'm not sure when the phrase "clue-by-four" first came in to common use. It's clear from a search of Usenet through Google Groups that it was heavily used there, particularly in the newsgroups where anti-spammers congregated (such as news.admin.net-abuse.email), by 1997 (Google Groups claims more than 12,500 examples of the phrase). Numerous posts were made with subject lines that called for the application of clue-by-fours to one or another offending spammer. I expect that's probably where I picked up the phrase; that was back when I tried to actively track down spammers rather than just deleting or filtering out their efforts as I do now, and I read those groups regularly at the time. The earliest citation on Usenet that I find is this one from 1992 describing widespread use at the University of Washington of the phrase. Mr. McClung's trademark is dated in 1999, so the common use of the phrase certainly predates his application. I don't know, maybe I picked up the phrase from Simon Travaglia's hilarious BOFH series. This other BOFH page, in fact, sells Clue-by-Fours™, and claims it as their trademark! (I don't think the page is associated with Simon Travaglia, though, and they don't really sell items.) The phrase's first appearance that I could find in The Jargon File, which tracks common use of terms among the computer literate, was in version 4.1.0, published on 12 March 1999, months before McClung's trademark application on 31 August 1999, so surely it was in common use before he trademarked it.

Interestingly, if you search for "Joel McClung" on Usenet through Google Groups, it appears that he has been posting for a long time, going back as far as 1984, which was even before I first participated in Usenet in 1987. The guy is clearly aware of netnews, so I wouldn't be surprised if that's where he discovered the phrase as well.

Mr. McClung's e-mail claimed that my use of the phrase "clue-by-four" would result in dilution of his trademark, which he is planning to use for a device that he is trying to bring to market. The Chilling Effects Clearinghouse has a very informative page about trademark law that covers the subject of trademark dilution. They say that "The Federal Trademark Dilution Act of 1995 (FTDA, 15 U.S.C. 1125) prohibits the commercial use of a famous mark if such use causes dilution of the distinctive quality of the mark." (Emphasis added.)

There Is No Cat has no commercial purpose. It's just a personal weblog. Trademark dilution is aimed at commercial use of trademarks. Therefore, it is not possible for something I posted here, particularly in the manner I posted as described above, to be actionable trademark dilution. Strike one. The fact that Mr. McClung's product has not even come to market yet argues against its consideration as a "famous" trademark. Kodak is a famous trademark. NBC is a famous trademark. Clue-by-Four is not a famous trademark. That's strike two.

The Chilling Effects page also talks about the distinction between primary meaning and secondary meaning of words and phrases. Words that are used in everyday conversation in their primary meaning can be used as trademarks in a secondary meaning. The example they give is "apple". If I eat an apple and then write about it here, I don't have to note that the word is a trademark that applies to computers and music. Computers and music are secondary meanings for the term "apple". In the world I live in, the phrase "clue-by-four" has a primary meaning as a metaphor for enlightenment. Use of the phrase to describe a novelty toy (the description used in the trademark records) would appear to me to be a secondary meaning. The trademark holder cannot prevent me from using the phrase in its primary meaning. Strike three.

Incidentally, while I was at the Chilling Effects site, I submitted a brief version of this tale. I don't know if it meets their threshold for inclusion in their database, or if it would require that I had received a letter or e-mail from an actual lawyer, but that's their decision.

When I used to work as a production editor for computer software and hardware manuals many years ago, I dealt with trademarks all the time. We expended great effort to make sure that the first occurrence of each given trademark was duly noted. As I recall from that time, if you have a trademark, you don't want it to be used as a noun. So, for example, we would never refer simply to StarLAN®; we always referred to it as StarLAN® Network, where the trademark modified the noun rather than serving as the noun. That's how we figured it, anyway. Similarly, Kleenex Corp. always refers to its namesake product as Kleenex® brand tissues, and even takes out advertisements in publications read by journalists to remind them to always use Kleenex as a descriptive term for tissues in their writing rather than as a noun. If Mr. McClung wishes to protect his trademark, he would be well served to refer to his product as a Clue-by-Four™ brand toy novelty or some such locution. He would be better served to consider whether his actions in protecting his trademark might not diminish the goodwill vested in his company.

IMHO, Mr. Joel McClung of Intrax, Inc., would benefit greatly from the vigorous application to his self of the metaphor from which he apparently lifted his trademark for a novelty toy. I hope that some day, he gains enough enlightenment to realize the tremendous irony in threatening people who use the phrase "clue-by-four" in its primary meaning to describe this metaphor of enlightenment.

I'll let you all know if I ever get a followup letter from a lawyer. I'll also let Chilling Effects know.

Posted at 10:43 PM

Comments

Note: I’m tired of clearing the spam from my comments, so comments are no longer accepted.

Not to mention that harrassing the author of a weblog will only result in the offending term being mentioned many more times in a followup post...

Some people are just plain arrogant.

Posted by Mike at 1:02 AM, June 20, 2003 [Link]

This is very entertaining. I'm so glad to see how well you have intelligently rebuked this character's rediculously attempted impingment on your expressions. Hooray for you.

Posted by Anonymous at 11:29 AM, June 20, 2003 [Link]

This is the same sort of insanity that I equate with Spike Lee and his claim that he owns the word "Spike." The fact the the NY courts are letting Spike get away with this shows the serious trouble the legal system is in.

Posted by Steve Covell at 12:05 PM, June 20, 2003 [Link]

Evidentally my trackback didn't take. I got one of these too, for boxofclue.com/ but I appear to have deleted the email message. Which is a pity.

www.drbacchus.com/journal/archives/000239.html

Posted by DrBacchus at 12:13 PM, June 20, 2003 [Link]

This was probably computer-generated. Many such are never checked by humans before being sent. I get a form letter threatening me with eviction for not paying rent on the first of every month, even though my landlord and I worked out a payment schedule long ago...

Posted by John Anderson at 9:38 PM, June 20, 2003 [Link]

It is amazing the idle threats that people will make. Even with my basic understanding of trademark law, I could see that there is no way his claim would stand up. However, I now plan to use clue-by-four as frequently as possible.

Posted by Christine at 9:09 PM, June 27, 2003 [Link]

Should we begin to refer to the wealth of historical use of *cough* clue-by-four *cough* as "prior art?" And treat it with the pseudo-respect afforded in stupid patent awards?

Posted by Mark at 7:05 AM, June 29, 2003 [Link]

I was surprised to see my house is 3.6 miles from the address registered with the USPTO for this patent. I'm tempted to drop by.

Posted by Meredith at 6:25 PM, June 29, 2003 [Link]

looks like I'm in the same boat but thankfully, my C&D letter hasn't come in yet.

paulbeard.no-ip.org/movabletype/archives/000052.html

Posted by paul at 3:20 PM, July 28, 2003 [Link]

www.chillingeffects.org/trademark/notice.cgi?NoticeID=681

Your posting to Chilling Effects passed muster: note this phrase: "Your opponent should say that your mark is causing consumer confusion or is likely to cause consumer confusion. (If the C&D does not say this, then no trademark claim exists, and you can rest assured that your opponent is engaging in scare tactics or has hired a highly incompetent attorney). "

I think that sums it up nicely.

Posted by paul at 3:28 PM, July 28, 2003 [Link]

I've been an intellectual property lawyer for many years (pause for hisses), and I HATE this kind of stuff. I have clients who have trademarked common phrases in specific classes. No problem there: The whole point of "word marks" is that they use standard English words (duh). Unfortunately, some of these well-meaning folks think that their registration entitles them to a nickel every time someone says "the". I go to great pains to let them know that's not the case from Day One. Sometimes, it just doesn't take, and I have to try to gracefully extricate them from stupid stuff like this. Perhaps the application of "dimensional lumber of enlightenment" would help...

Posted by Montana at 11:23 AM, October 3, 2003 [Link]

Just don't sing Happy Birthday or any other song on your weblog or you will have the music industry down on our heads for spoiling all their CD sales and sueing us all to death. That only makes the lawyers happy. Was it Mark Twain that said "Kill all the lawyers"? There are days when I would like to do just that. Don't mention my handle ever, I want to trademark it.; P Hey can I trademark a pottymark company? Then I can pottymark all the companies that use way to many lawyers to trademark their left testicle, or was it their right?

Posted by TheRook at 10:17 AM, April 23, 2004 [Link]

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What do you mean there is no cat?

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