Tuesday, November 24, 2009

Do you hear something? Is that my own horn? Why, yes it is. Toot!

I became a lawyer for a lot of reasons, which is a good topic for another post on another day.

But one of those reasons -- and not a small one -- I really like to win. I know it won't happen every time. But when it does, it feels so nice.

(Remind me to tell you sometime about the on-campus interview when I was a 2L, and the callback interview I got for saying just this.)

So I've got this client -- LodgingKits.com -- in the business of selling, primarily, kits for use in the lodging industry at the website (three guesses) http://lodgingkits.com.

A while ago, they were named as Respondents in a UDRP brought by Lodging Kit Co., which operates http://lodgingkit.com. (No hyperlink - I know it's petty, but I'm a litigator by penchant and training, which means there's a level of emotional investment with my client, which means the bad guys get no link love from me.)

Now, during the pendency of the matter, I felt the best interests of my client were served by my silence. Now that it's pretty much over (barring some sort of trademark enforcement litigation on Complainant's part that would be ridiculously ill-advised ), I'm feeling a little more unrestrained.

I don't want to get all ad hominem on the Complainant's counsel, which will require a fair amount of restraint on my part. I will, however, say that the most distinct impression I got from the complaint was that it was done by someone who had no experience with UDRPs and/or who had no interest in winning the case.

That is to say, I don't have the time to do a redline right now, but the Complaint was a barely modified version of the sample complaint available from the Nat'l Arb Forum. I kept thinking of all those comedy movies where someone's administering an oath, and says, "Repeat after me: I, state your name," and the oath taker dutifully repeats, "I, state your name."

The only assertion of rights on which the Complaint was based was a registration of the mark on the Supplemental Register. Which alone wouldn't necessarily be fatal -- which is to say, I could imagine a fact pattern where it would not -- but is generally so, given what the Supplemental Register is all about.

Certainly on the facts of this case, the registration Complainant was relying on was less than useless to them. They had sought registration, been rejected for descriptiveness, and then amended to the Supplemental Register - essentially conceding a lack of secondary meaning.

I don't need to recap the argument too thoroughly; you can read it yourself in an elegantly structured and eloquently argued (if I do say so myself) Response (on JD Supra, here). I ring the no-secondary-meaning bell a bunch of times, in different contexts.

Complainant came back with something only a tiny bit less inane, including an affidavit (without exhibits) and bald assertions attempting to overcome the gross failures of the original Complaint. I had the job on a flat-fee basis, and could have adequately answered the Additional Submission with relative ease. But it was just so... crushable. It was fat, slow one over the plate, and I just had to spend the extra couple of hours knockin' it all the way out. Which is to say, I returned a(nother) elegant and eloquent Supplemental Response (on JD Supra, here).

In any event, the decision came down squarely for my client, agreeing with my primary contention that Complainant had not established rights in the mark in question. I would have liked it if the Panel had agreed with me in all my contentions, but - as is not atypical - once it determined that Complainant had failed to satisfy the first requirement of the Policy, the Panel didn't pass on the other prongs.

Even so, it's a definitive win for me and the client, and it served the client's interests in the obvious way as well as more subtle ways.

I'm happy, client's happy. All manner o' things are well.

Now that's a good day.


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