Creativity and Ramblings from the heart of NYC and around the World

Thursday, January 19, 2006

Just the Facts Bub
Further Exploration into SF/SE

This is why I love SnB [please note approved usage here]...
Jodi Sax, fab lawyer and SnB regular, did some research, posted it and it spawned a little dialog in the group. After yesterday's war of words, and in a hope of keeping the facts in's round two.

From Jodi:
Sorry you guys, - here is what is actually going on with the stitch and bitch cafe situation, according to the USPTO website:

Stitch and Bitch Cafe owns a registered mark and is the prior user of the name, with superior rights. Debbie does not "own" the stitch & bitch trademark (with the exception of any common law rights she may have garnered), but has pending trademark applications, registrations for which have not been issued because of a likelihood of confusion, as cited by the USPTO with Stitch and Bitch Cafe. The "and" or "&" or the fact that "cafe" is appended isn't really relevant. It's the related nature of the uses of the marks, the similarity of the marks, and the likelihood of confusion between the marks that governs under trademark law. Because of their earlier use, Stitch and Bitch cafe's rights will trump those of Ms. Stoller if the trademark office concludes that there is a likelihood of confusion between the two marks, which it appears to have done based on its most recent objection to Ms. Stoller's application.

So, no, in my opinion, Yahoo was not in the wrong in taking action as it did. Not taking sides here, just wanted to clarify for all who are curious.

Hope this helps.
Intellectual Property lawyer and trademark dork. :)

opinion from concerned SnB-er:

I see your point, however there is a public relations issue here also,which is why Xerox doesn't go after people who use the term "Xerox machine"to mean "copy machine". Hence the term, Sew Fast Sew Evil.. What a way to lose friends and gain enemies.
Cathy Wilder

The facty rebuttal from Jodi:

Ah yes, I see your point. However, under the trademark law, trademark owners are required to patrol the use of their marks or risk losing them. Xerox absolutely does go after those who use their mark in a descriptive sense, or they risk the word Xerox becoming generic and losing their trademark rights, which I think is dangerously close to happening.

Just fyi. :)

I love it -- do you realize how lucky we are to be able to HAVE this dialog...Openly! Fantastic!
Cheers from China!


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