When Sending A Bogus TM C&D, Don't Send It To A Lawyer Who Understands TM Law

Eric Goldman alerts us to a somewhat bizarre cease & desist letter sent to a law firm, Cobalt Law, which specializes in IP law. At issue was the fact that in a recent blog post on Cobalt's news blog, which analyzed a recent case, it used the logo of one of the companies involved in the case. That company, Career Step, whose logo I'll post here because it's what we're discussing, apparently had its own lawyer, one Erik Olson from the law firm Durham, Jones & Pinegar, send the cease and desist, claiming that this was trademark infringement: Of course, using a logo in such a manner is not trademark infringement in the slightest, but it doesn't stop Olson from making claims that it is. The letter claims that this is "misappropriating Career Step's goodwill... and confusing the public. This will damage and likely has damaged, Career Step." Of course, I'd argue that having its lawyer send out such a cease & desist would likely do more damage than the original post.

Not surprisingly, Cobalt's response is short and to the point:

Dear Mr. Olson,

We are in receipt of your letter (below) in which you demand that we cease or you will sue.

We are a law firm; and we are reporting news in our blog. Clearly is that stated under the category on 'News' as you acknowledge in paragraph two of your letter.

We acknowledge that your client has trademark rights. However, protection for trademark rights under the Lanham Act is limited to protection against another's use of a designation to identify its business, or in marketing its goods or services in a way that causes a likelihood of confusion. Such trademark rights do not override First Amendment rights.

I'm guessing that will be the end of the discussion.

It's really unfortunate how the connotation of trademark as being "intellectual property" leads people to think it means they have complete ownership over the mark and can control any and all uses of the mark. That has never been the intention of trademark law, nor what the law actually says (even if it's expanded somewhat in that direction over the years). Such threats may act against those not familiar with the law, but it's surprising that the Career Step's law firm either did not try, or did not succeed in trying, to convince the company that issuing such a threat to a law firm (and one extremely well-versed in trademark law) would be a mistake.

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