New York calling

Hey, look, there have been developments in everybody’s favourite trademark dispute.

Deb Stoller has filed a motion to amend her petition to cancel SFSE’s trademark to add new grounds.

The parties have been going forward with discovery–interrogating each other’s representatives in order to discover what relevant evidence exists. And based on those revelations, Stoller wants to amend her petition to add further grounds for cancelling the STITCH & BITCH CAFE mark.

If you check out the above link, start around page 4 of the proposed amended document. In a nutshell, the new allegations are that at time the trademark application for STITCH & BITCH CAFE was filed, the mark was not actually in use in association with the wares and services listed in the application.

Trademark rights, whether registered or not, are predicated on use (with all the legal wrangling such a short word implies) in commerce or trade. If you don’t have a trademark registration but are using some mark to distinguish your goods, services, or business, you may have the common law right to protect yourself from others who are passing their own wares or services as yours — but to get that right, you must be using some trademark or tradename, because you’ll need to prove that you have developed a reputation or goodwill in that mark or name. (If you weren’t using it, how could you have goodwill in it? It follows logically.)

If you want a trademark registration, you may file the application based on an intent to use the mark at a later date; but even if your application passes all the procedural hurdles and substantial examination, it will not be registered unless you provide proof that you have begun to use the mark (it’s called a “specimen” — an example of how you’re actually using your mark as a trademark, on packaging, in ads, and so on). If you file a trademark application for a mark that you’re already using, then you may declare your date of first use, and provide a specimen to show how you’re using the mark.

That all seems fairly innocuous, but mistakes can have serious consequences for a trademark registration. Giving an incorrect date of first use may invalidate a trademark registration. Because trademark registrations are based on assurances that the applicant believes that they’re entitled to the mark (a subjective opinion), and that they’ve been using it at least as early as the date they say they’ve been using it (which should be objective), those dates are important. (Now that I’ve harangued you about first use dates, I’ll refer you back to this.)

In the case of SFSE, the application for the CAFE mark was filed in 2000 based on alleged use since November 1998.

But now, Stoller wants to allege that SFSE was not “providing on-line chat room for the transmission of messages among computer users concerning sewing via a global computer network” under International Class 38 with the CAFE mark.

Registered (and applied-for) marks are classified according to the wares and services for which they’re used. Since more than one entity can use the very same trademark for different products or services, there needs to be an orderly way to categorize trademark registrations to make it easier to determine whether it would be confusing to allow two people to use the same mark. Someone using the trademark KNITZ for fungicides in IC 5 (why not?), business-wise, would probably never collide with someone selling KNITZ beer in IC 32 (why not indeed?), and customers may never mistake the beer as a product of the fungicide company (we hope). The International Classifications are quite broad, though, and they’re not determinative of confusion. It’s conceivable that two people with similar marks could coexist in the same class, and it’s quite possible that similar marks in different classes could be confusing.

Applicants often tailor the description of their goods and services to match the wording in international or national classification manuals, because the wording must be in ordinary commercial terms that other people in the industry would understand, and examiners like to see things that match their classification manuals. Note the usage of “transmission of messages” and “global computer network” in the CAFE mark service description: those are phrases in the manual.

International Class 38 is “telecommunications“. That class covers services involving one-to-one and one-to-many communications using technology. In the amended petition, one new ground is that the services that were provided as of 1998 in association with the CAFE mark–the guestbook on the SFSE site–was not a service in IC 38, because SFSE did not actually provide telecommunications service, just the guestbook. In other words, to provide a service in IC 38, SFSE had to act as some kind of Internet service provider to provide access means to their site.

On a related point, another ground is that the “chat room” that SFSE purported to provide wasn’t a chat room at all, because it was incapable of providing real-time messaging. I think a number of us noted the guestbook nature of the SFSE forum some time ago–in fact, I think that occasionally a poster would ask (in the guestbook) if there was a way to easily find a conversation thread or previous guestbook entry.

The amended petition also presents grounds for expunging the CAFE registration in respect of the remaining services, “sewing instruction and manuals distributed in connection therewith”. In the original petition, this part of the trademark had not been attacked at all. Evidently the discovery turned up some new information: that if there had been use of the CAFE mark in association with sewing instruction in 1998 (which is disputed), it was not in interstate commerce. (Trademark registrations are governed by Federal law.) And whatever use SFSE had made of the mark for sewing instruction, it had abandoned that use for long enough that the registration for those services should be expunged.

There are also a couple of allegations of fraud on the Trademarks Office, based on the fact that SFSE knew that it wasn’t actually using the mark as declared in the application. Fraud allegations are not unusual in IP proceedings, but an actual finding of fraud by a court or administrative tribunal is not so usual.

In the end, even if the trademark registration is cancelled, it doesn’t mean that SFSE will have lost its rights to use its trademark. It simply wouldn’t be registered, which would make it harder to enforce against others. But would that factor sway ISPs?

(Thanks, Yvonne, for the TTAB alert!)

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10 Responses to New York calling

  1. j. says:

    Comments will be closed on this post due to excessive spam. If you want to comment on this subject, pick another post in this category.

  2. deedee says:

    Thanks… My instructor is not a lawyer and I don’t think she really understands as much as she thinks she does (which is scary since she gives workshops it). I’ve already memorized what she wants me to say, but I like knowing the actual deal.

    Your analysis is a little different from what she provided.

  3. j. says:

    Fair dealing is an exception to copyright infringement in Canada, which essentially presupposes that there was an activity that might be considered to be infringement to begin with. The problem is that the analysis of fair dealing mirrors part of the analysis of copyright infringement, so the two can get confused.

    Analyse it this way:

    1. Identify the suspect taking of another’s work (photocopying, plagiarizing, colourable imitation, etc. etc.).

    2. Determine if it was copyright infringement:
    (a) was the taking done without authorization of the copyright owner or someone able to give that authorization?
    (b) did the taking constitute a substantial part of the copyrighted work? (this is the hardest of these three questions to answer, because “substantial” is not clear-cut)
    (c) if so, did the alleged infringer have access to the work? (may be indirectly; but if the alleged infringer was totally isolated from outside influences including a source for the work in question, then it seems more like coincidence and not copying)

    3. If the act was infringement (yes to all three questions in part 2),
    (a) determine if it falls within one of the specific fair dealing exceptions
    (a) did the act fall under one of the categories of fair dealing (not detailed here)?
    (b) was this manner of dealing with the work “fair”?

    Determining whether the dealing was “fair” is a somewhat quantitative, but also qualitative analysis. At this point, you again consider how much of the work was taken, and whether it was necessary for the fair dealing purpose, and what impact it has on the original work (and other considerations). So in a fair dealing analysis, you assess some of the same questions twice: first as “substantial part” when identifying copyright infringement, and again as “fair” dealing.

    In the case of a pattern book, chances are the act of copying even a single pattern in a book makes it infringement, which means yes, it’s against the law, but then you need to move on to the fair dealing analysis.

  4. deedee says:

    OK, this has me thinking enforceability and how unfair and unbalanced it can be…

    I’ve been having a debate with an instructor about Copyright. She claims that copying a patternbook or at least much of a patternbook to have a (personal) working copy is against Can. copyright law.

    If you need fair dealing and the right to an expemption, wouldn’t it technically be against the law. But then the cases seem to suggest fair dealing can also be an independent justification.

  5. j. says:

    I figure that SFSE targeted the groups that were hosted by ISPs that had clear trademark infringement allegation procedures, *and* that were likely to comply with their demands without inquiring too far into the merits. If my webhost received some complaint that I was infringing a trademark, I’d rather expect that they’d make some inquiry of me before shutting me down.

    (Uh… I hope. I never asked.)

    The thing about the use in commerce is also a bit tricky. SFSE wasn’t charging money to access their site, and the chat forum seemed to be a supplement to their in-person gatherings, but I recall reading (somewhere… now I can’t find it) a decision or comment that stated that “commerce” was broad enough to encompass activity that didn’t require a transfer of funds. Not certain if it would include this particular type of use. And I believe the legal definition is something like “all commerce which may lawfully be regulated by Congress” (I’m pretty certain some government agencies think they can regulate this kind of thing .) So we’ll see what the TTAB (the board hearing this) will say–and oh, there are a few blogs run by US trademark attorneys who report TTAB decisions when they’re published, so it will be very interesting to see what their comments will be.

    The falsity of the claim that they coined the “stitch and bitch” phrase is incidental–their trademark application wouldn’t have made that kind of statement, only that they believed they were entitled to use the mark (which isn’t the same thing as inventing the phrase). Plus, they tacked on “cafe” to the end of their mark. The evidence of the use of “stitch and bitch” is more useful, I think, for the descriptiveness argument.

  6. LissaKay says:

    Mmkay … So, SFSE has the TM app for the online service thing (chat, forum, message transmission) and that is how/why they came after the Yahoo Groups, right? So … why didn’t they go after Debbie’s forum?
    http://tinyurl.com/ebz4t

    Further, as I understand it, TM can only be placed on commercial interests, in that one must be earning some kind of consideration (money) in relation to the use of the TM. Until very recently, SFSE only used the SNB Cafe mark in relation to the online guestbook and forum, nothing was sold through those until they decided to stamp the phrase on some sewing and knitting notions. The relation to SFSE was just by mention (online forum provided by SFSE, etc), and until recently, they engaged in no online commerce, only selling product and services at their physical store in New York, right?

    How much hay can be made of SFSE’s contention that they invented the SnB phrase being proven false? Some lovely person is collecting evidence of use of the phrase, both online and Real World, prior to 1997. Putting TM on SnB would kinda be like TMing “Quilting Bee” or “Sewing Circle” wouldn’t it?

    I think I think too much … especially on a Saturday. I’m going to go Stitch ‘n Bitch now …

  7. Chris says:

    As always, your summary of these issues so confusing to the layfolk amongst is much appreciated!

  8. Yvonne says:

    You’re welcome! Thanks for the analysis! And for the laugh-out-loud moment at the hypothetical fungicide/beer confusion. Hehehehe.

  9. j. says:

    Yay if the amendment is allowed (likely) and if the Board hearing the argument agrees.

    If you look at the different International Classes (follow the link in the post and poke around), you’ll see that there really isn’t any other category that a guestbook/chat forum fits. And I wonder how much the Board will split hairs on the guestbook/chat forum issue. However, there still are the original grounds (that “stitch & bitch” and “cafe” are each descriptive).

    Regardless of this outcome, I’d like to know what’s going to happen with SFSE’s new trademark application for STITCH AND BITCH. If this cancellation proceeding succeeds, Deb’s applications will continue to be cited against SFSE’s new application, resulting in… an opposition by SFSE against Deb? (An opposition is kind of like a cancellation proceeding, but it takes place before a mark is registered.) If the cancellation fails and Deb’s applications die, she arguably has common law rights in the marks for her series of knitting and crochet books, and SFSE did not introduce knitting until after this whole thing started, so… an opposition by Deb against SFSE?

  10. LissaKay says:

    Umm … Yay?