Self-Described Patent Expert Ronald Riley Sued for Trademark Infringement

This is one of those stories that intertwines the worlds of patents, copyrights, and trademarks.

Those in the patent world, especially those who follow the subject of patent law reform, know the name Ronald Riley. Riley, who describes himself as an inventor, entrepreneur, patent consultant, and independent inventor advocate, is well known for his comments about the patent system, patent reform, and lawyers representing inventors and large companies (click here for a blog that has chronicled some of Riley's more controversial comments among blogs and other online forums).

Well, Riley has been sued by Dozier Internet Law, PC – the law firm which is most widely known among the blogosphere as the law firm that claimed that its cease and desist letter was copyrighted and thus could not be posted online by the recipient (Techdirt article here).

The complaint (posted here), which was filed on September 4, 2008, in Virginia State Court (the Circuit Court for Henrico County, Virginia), is mostly focused on shining a light (in very unflattering terms) on Riley’s promotional activities that have made him the personality he is. See articles on the lawsuit at Richmond.com and Techdirt. Dozier’s own blog also writes about the filing.

The complaint describes Riley’s “marketing” campaign approach as follows:

These campaigns are executed under a three tactic approach: attacking competitors through the publication of defamatory and outrageous accusations on blogs, forums and social networking sites; launching "sucks" sites against competitors programmed so his websites appear when the company is searched, and often containing trademark infringing uses of the competitor's name; and launching "sucks" websites attacking non-inventor or entrepreneur industry businesses for the purpose of generating attention, which leads to a higher ranking on the search engines, more traffic to Riley's sites, and more "marks" for him to solicit.

It should be noted that among Riley’s “suck” sites is http://www.cybertriallawyer-sucks.com/ (Dozier’s official website is http://www.cybertriallawyer.com/). It should be noted that some of Riley’s criticism of Dozier relates to the aforementioned copyright claims by Dozier with respect to its cease and desist letters (in which case I think most people would side with Riley).

The complaint summarizes Riley’s activities as follows:

In summary, Riley concocts credentials in a highly sophisticated way, hijacks and steals the identity and goodwill of organizations, uses inventor and entrepreneur forums, blogs and other online social networking sites for the commercial purpose of locating prospective clients or customers and driving traffic to his sites, and fends off his detractors, and those attempting to spread the truth about Riley to novice inventors and entrepreneurs, by attacking relentlessly the right to speak anonymously, and the right to speak in general. Riley attacks by asserting a broad range of outrageous and false misconduct impugning the reputation of the speakers when identifiable, threatening to track down anonymous posters through lawsuits, and threatening to obtain log files and IP addresses of those exercising their free speech rights to anonymity.

However, in the end, the only causes of action set forth in this complaint are for trademark infringement (state trademark infringement and common law trademark infringement). Specifically, Dozier has a state trademark registration for its name “Dozier Internet Law, P.C.” (having registered the name with the State Corporation Commission's, Division of Securities and Retail Franchising, of the Commonwealth of Virginia).

The crux of Dozier’s trademark infringement cause of action is:

The Riley Businesses have launched a page on the web that contains twelve (12) different instances in which the trademark "Dozier Internet Law" is exclusively used as anchor text in a hypertext link. An anchor link is supposed to describe the destination a visitor will reach when clicking on the link, and functions much like a road map with a shortcut. These anchor links, however, do not take a visitor to the Dozier Internet Law website. Rather, the links send the party clicking on them to the main website used by the Riley Businesses that offer services which directly compete with Dozier Internet Law.

Dozier argues that Riley’s conduct in having such anchored text links leading to a website of Dozier’s competitors has caused initial interest confusion and is likely to cause consumer confusion, mistake and deception as to the source or origin of the goods or services of Dozier Internet Law since the link to Dozier Internet Law leads to a website other than Dozier’s website. In addition, by Riley having such links in the text of his web pages, Riley’s own websites appear whenever a client does an internet search for Dozier Internet Law on a major search engine.

Given the fact that most of the complaint sets forth allegations that have little to nothing to do with the alleged trademark infringement, this lawsuit appears to be just another part of a larger ongoing “personal” dispute between Dozier and Riley. Of course, anybody who knows Riley knows that he is not the type who will back down from what is for the most part a personal attack on his character as well as an attack on his First Amendment rights to free speech – under the guise of a trademark infringement lawsuit.

Second Circuit Affirms District Court’s Denial of Relief to General Cigar in COHIBA trademark dispute

As I previously blogged about here, General Cigar and Cubatabaco have been involved in a contentious trademark battle since 1997 over ownership rights to the mark COHIBA for cigars. Cubatabaco filed a cancellation proceeding against General Cigar over the registered mark COHIBA. See Empresa Cubana del Tabaco v. General Cigar Co., Cancellation No. 92025859 (Filed Jan. 15, 1997). The cancellation moved over to the federal courts in 1997 (see Empresa Cubana del Tabaco v. General Cigar Co., Case No. 97-cv-8399 (S.D.N.Y.)). While the district court in 2004 held that Cubatabaco owned the trademark COHIBA for use on cigars under the famous marks doctrine and ordered General Cigar Co's registration cancelled (opinion here), the U.S. Court of Appeals for the Second Circuit reversed the district court on the basis that the U.S. trade embargo against Cuba prevented Cubatabaco from acquiring property rights in United State trademarks under the famous marks doctrine. See Empresa Cubana Del Tabaco v. Culbro Corporation, 399 F.3d 462 (2nd Cir. 2005), cert. denied, 126 S.Ct. 2887, 165 L. Ed. 2d 916 (2006).

Upon remand to the district court, General Cigar subsequently filed a motion with the district court to amend its prior order to add an order to the USPTO dismissing the pending cancellation proceeding. The district court, however, denied the motion as untimely because General Cigar had not sought such claim for relief earlier in the case and because the TTAB can properly decide the impact of the Court of Appeal's decision. See Empresa Cubana Del Tabaco v. Culbro Corp., 478 F. Supp. 2d 513 (S.D.N.Y. 2007). General Cigar appealed the decision to the Second Circuit Court of Appeals.

On September 4, 2008, the Second Circuit Court of Appeals affirmed the district court’s decision finding no abuse of discretion by the district court in deciding not to order the USPTO to dismiss the pending cancellation proceeding. See Empresa Cubana Del Tabaco v. Culbro Corp. et al, Appeal No. 07-1248, 2008 U.S. App. LEXIS 18819 (2nd Cir. September 4, 2008) (per curiam).

The Court of Appeals reiterated the fact that General Cigar did not request the relief it sought (authorized by 15 U.S.C. §1119) as a counterclaim in its original pleadings, but only after the district court had adjudicated and dismissed the underlying trademark action between the parties. As such, the district court treated its motion for relief as a motion to amend the judgment under Federal Rule of Civil Procedure 59(e).

The Court did not address whether General Cigar’s motion was timely under FRCP 59(e); instead, the Court concluded that when such a request for relief was made for the first time after the underlying trademark dispute had already been adjudicated, such request was essentially based on an estoppel theory:

That is, a request for section 1119 relief made for the first time after judgment essentially amounts to a claim that because the district court adjudicated a trademark case in a certain way, there is nothing left for the PTO to decide, and so it ought to be instructed to follow the court's lead for the sake of efficiency and consistency. See Eagles, 356 F.3d at 731. Like the Sixth Circuit in Eagles, we see no reason why it was an abuse of discretion for the district court simply to tell General Cigar to raise its estoppel claim before the PTO and let the agency decide, subject to review by the Federal Circuit, what preclusive effect should be given to our decision in Empresa V, if any. See id. (noting PTO's expertise in addressing the estoppel issue).

Id. at *6-7.

General Cigar also attempted to argue that its motion was not one to amend the judgment, but rather one to enforce the judgment pursuant to the district court's ancillary jurisdiction. However, the Court cited the U.S. Supreme Court’s caution against exercising ancillary jurisdiction “over proceedings that are entirely new and original or where the relief [sought is] of a different kind or on a different principle than that of the prior decree” (quoting Peacock v. Thomas, 516 U.S. 349, 358 (1996) (citation and internal quotation marks omitted; alteration in original)). Because General Cigar did not raise its section 1119 claim in the pleadings, the issue of whether relief under section 1119 should be granted was never before either the Second Circuit or even the district court in these proceedings until after the district court had dismissed the claims in the case. As such, the relief sought by General Cigar was “of a different kind” than what had been considered by the district court and by the Second Circuit. Furthermore, because the motion is based on an estoppel theory, it is premised on a “different principle than that of the prior decree.” Therefore, the motion was not a proper invocation of the district court's ancillary enforcement jurisdiction.

No word yet on Cubatabaco’s motion filed earlier this year with the district court seeking relief from the district court's previous dismissal of Cubatabaco's claim of relief based on New York common law unfair competition by misappropriation. PACER records do not reveal any outcome from the oral hearing that was scheduled to have occurred April 2, 2008.

Nuvio and Garmin settle trademark dispute over NÜVIFONE

I previously wrote (link here) about the lawsuit between internet telephone company Nuvio Corp. (“Nuvio”) and GPS maker Garmin Ltd. (“Garmin”) over Garmin’s planned sale of the NÜVIFONE phone.

The parties apparently reached a confidential settlement and the lawsuit was dismissed earlier this week (Forbes.com story). Garmin’s spokesman said, “We can't discuss the financial terms, but we are pleased with the settlement.” Nuvio’s CEO said, “We both came to terms that protected our respected intellectual property. That’s what we were concerned about.”

So, reading between the carefully crafted lawyer statements, Garmin probably paid a “relatively” small price to Nuvio so that it could move forward with its NÜVIFONE phone as well as its Section 1(b) intent-to-use trademark application for the mark NÜVIFONE. And Nuvio, along with a little bit of money (enough to pay the lawyer fees) and an agreement that sets some limits on Garmin’s use of the NUVI prefix, can proclaim to the world that it aggressively protects its intellectual property.

Garmin had planned to release the Nuvifone later this year, but announced that the rollout has been pushed back to sometime in the first half of 2009. A spokesman for Garmin said the decision to push off the release had more to do with ongoing negotiations with wireless carriers and not the lawsuit.

A Test of Your Generic (Trademark) Sensibility

The TTABlog® today offers up a list of Trademark Trial and Appeal Board ("TTAB") decisions addressing genericness as a test to trademark practitioners and the public on the TTAB’s seemingly schizophrenic approach to addressing genericness refusals. You may be surprised what the TTAB has found to be generic and what it has found to be merely descriptive (in which case such mark could be registered on the Principal Register upon a showing of acquired distinctiveness).

Trademark Dispute over the “Plaza” in Las Vegas Headed to Trial in Nevada State Court

I must admit that I had missed this local story about an interesting and ongoing Nevada state court trademark battle pitting two billionaires against each other over the hotel name “Plaza.”

Reporter Brian Miller has an article appearing today on GlobeSt.com (link here) about the lawsuit filed last year by the Tamares Group (“Tamares”) – the owner of the Plaza Hotel & Casino in Downtown Las Vegas – against the El-Ad Group, Ltd. (“El-Ad”), the owner of New York’s famed “Plaza Hotel,” which it purchased in 2004 for $675 million. Tamares is owned by billionaire Poju Zabludowicz while El-Ad is a subsidiary of the Derek Group which is owned by billionaire Yitzhak Tshuva.

El-Ad (through its IP holding company Plaza IP Holdings, LLC) owns the federal registration for THE PLAZA design mark (pictured above) for hotel and restaurant services, which was registered on September 1, 1987 with claimed date of first use dating back to December 31, 1906. El-Ad also has several other pending applications for both the word mark THE PLAZA and THE PLAZA design mark for such services as condominium hotel services and casinos – most of which were filed in February 2007.

New York City's Plaza Hotel

In May 2007, El-Ad announced (click here) its acquisition from Phil Ruffin of a 34.5 acre parcel of land located on the Las Vegas Strip for an estimated $1.25 billion on the site where The New Frontier & Casino used to be located. El-Ad’s planned to develop the site for a $5 billion Las Vegas Strip resort project that was apparently going to use El-Ad’s “Plaza” brand name (LA Times story here).

In March 2008, El-Ad formed a joint venture (El-Ad IDB Las Vegas LLC) with a subsidiary of Israel’s largest business group, IDB Development Corp., in order to develop its “Plaza” project, which is currently slated to begin excavation sometime by the end of 2008 (click here the announcement of the approval of the project by the Clark County Commission).

Artist's rendering of The Plaza - Las Vegas

The only problem is that Las Vegas already has its own “Plaza” hotel – The Plaza Hotel & Casino located at the end of Fremont Street in downtown Las Vegas for the last 30 years. And while Las Vegas’ Plaza Hotel may not be as luxurious as the more well-known Plaza hotel in New York, fans of downtown Las Vegas will agree that this property has become a long-standing fixture of downtown Las Vegas and has held its own over the years amongst the hotel/casinos along “Glitter Gulch” and even amongst those on the Las Vegas Strip.

Las Vegas' Plaza Hotel (and Casino)

Of course, it should also be noted that when the hotel/casino originally opened in 1971, it was known as Union Plaza (changed from Union Hotel) because it was built on the site of the old Union Pacific Railroad Station (if you go back and watch the James Bond film Diamonds are Forever you can even see the Union Plaza under construction). When exactly the “Union” name was dropped is unclear -- in 1992 it was renamed Jackie Gaughan's Plaza and when it was sold to Barrick Gaming Corp. in 2004, the hotel appears to have been rebranded Plaza Las Vegas.

In addition to its common law usage of the “Plaza” name over the years, Tamares holds several Nevada state service mark registrations – although all of them were filed shortly after El-Ad announced its intended “Plaza” project:

• PLAZA (for casinos) – filed June 6, 2007, claiming first date of use back to 1/1/1977
• PLAZA (for hotels) – filed June 6, 2007, claiming first date of use back to 1/1/1977
• PLAZA HOTEL AND CASINO (for casinos) – filed June 6, 2007, claiming first date of use back to 12/31/1982
• PLAZA HOTEL AND CASINO (for hotels) – filed June 6, 2007, claiming first date of use back to 12/31/1982
• PLAZA LAS VEGAS (for casinos) – filed May 31, 2007, claiming first date of use back to 3/24/2004
• PLAZA LAS VEGAS (for hotels) – filed May 31, 2007, claiming first date of use back to 3/24/2004

In addition, on June 1, 2007, Tamares filed two federal servicemark applications for the mark PLAZA LAS VEGAS (for casinos and “Hotel, bar and restaurant services provided in Las Vegas, Nevada” [Comment: Interesting limitation of services]). Then on June 6, 2007, Tamares filed two additional service mark applications for PLAZA HOTEL AND CASINO (and design) for casinos and hotel, bar and restaurant services. Because El-Ad’s applications were earlier filed and because of the potential likelihood of confusion, the PTO suspended prosecution of Tamares’ applications pending disposition of El-Ad’s applications.

So, naturally, when El-Ad’s applications started getting published for opposition, it is no surprise that Tamares filed oppositions to registration. See Tamares Las Vegas Properties, LLC v. Plaza IP Holdings LLC (USA), Opposition Nos. 91181304, 91181273, 91181266, and 91181236 (T.T.A.B. Filed December 12, 2007). Of course, all of these oppositions have been suspended pending the outcome of the civil action.

While the lawsuit was initially filed in Clark County District Court, El-Ad removed the case to federal court; however, Tamares succeeded in having the case remanded back to state court (background article from Haaretz.com). After deciding various summary judgment motions brought by both parties, the court scheduled the case for jury trial beginning next week.

Vegas™Esq. Comments:

This should be an interesting case. Without the benefit of any pleadings, I can only speculate as to the claims and counterclaims -- other than the obvious claims by Tamares that El-Ad's use of the “Plaza” name for its “Plaza Las Vegas” hotel will cause reverse confusion.

El-Ad is probably trying to argue that consumers will not confuse its famed high-end luxury “Plaza” brand with Tamares’ downtown hotel and casino, which explains why the jury will actually be touring the Plaza Hotel & Casino during the trial. However, I think most consumers encountering just the marks alone “Plaza Las Vegas” and “Plaza Hotel & Casino” would believe they are affiliated – and moreover, would associate “Plaza Las Vegas” with the Plaza Hotel & Casino given the long-standing use of the “Plaza” name in connection with this Las Vegas hotel and casino.

While El-Ad could try to argue that “plaza” is so widely used in conjunction with hotels nationwide that the word doesn’t serve as a source identifier (do a Google search for the words "plaza" and "hotel" and see what you find after you get past the obvious hits), that kind of argument would seem to go against El-Ad’s own trademark interests in the “Plaza” brand name.

El-Ad may also try to argue that it actually has superior senior rights to “The Plaza” name for hotel services due to the long-standing use and fame of the name in connection with its New York hotel; however, El-Ad will have a tough time trying to explain away Tamares’ long-standing open and notorious use of the “Plaza” name in connection with its Las Vegas hotel/casino (although the Las Vegas hotel/casino may have only been known just by the words “Plaza” since 2004 which gives El-Ad some argument that its rights are superior -- and also helps should Tamares attempt to assert a laches defense to any counterclaim of infringement by El-Ad). In addition, “The Plaza” is famous for hotels, but can the same be true for “casino services.”

However, if El-Ad cannot stop Tamares’ use of the “Plaza” name, I would think that El-Ad would be more concerned that consumers might actually think that the Plaza Hotel & Casino is somehow affiliated with El-Ad’s Plaza Las Vegas and be disappointed when the Plaza Hotel & Casino is not as upscale as they would have expected from the owners of “The Plaza Las Vegas” – which ultimately harms El-Ad’s goodwill in its own “Plaza” brand. But I guess if you pay $675 million for an old piece of New York property with a well-recognized name, you might be eager to try and exploit that name to get your money's worth on your investment.

The Las Vegas Trademark Attorney Blog Turns One Year Old!

It was one year ago that I started my own little foray into "blawging" -- opting to focus exclusively on my favorite intellectual property, trademarks.

While it might be nice to take some time and reflect on the past year, I'm too busy trying to find the next trademark story about which to write. Maybe in another year . . . until then, I hope to keep delivering the same kind of useful, insightful, and/or intestesting trademark stories I can find (which haven't already been covered - probably more eloquently and certainly more concisely - by my trademark blawging brethren -- you know who you are).

NY Times Spotlights Growing Importance of Trademarks

The New York Times ran on article yesterday (link here) on the growing importance of trademarks as an intellectual property asset in an e-commerce world. (HT: Marty Schwimmer’s Trademark Blog).

As the article notes, patents have often been the “stars” of the IP world – with trademarks relegated to the status of stepchild (Ed. – which I guess then makes copyrights the crazy uncle in the garage).

The article begins by citing the recent public relations fiasco the USPTO endured – and then rectified – when a month after issuing a Notice of Allowance to Dell for the mark CLOUD COMPUTING (a term having acquired a generic meaning in the computer world), the USPTO cancelled the Notice and reissued a non-final action rejecting the mark on the basis that it was merely descriptive (and most likely generic in which case it can never serve as source-identifier for Dell’s services). See articles on the Dell application at Internet News and Likelihood of Confusion®. The story of Dell’s trademark application is meant to illustrate how the internet can quickly change what might have been a protectable mark (cloud computing) into a generic term free for all to use.

So after years of patents getting all of the attention in the IP world, trademarks are finally getting their turn in the spotlight due to the growing value of brand names and increasing efforts by trademark holders to protect their valuable brands (especially online) – at least according to Stanford Law School Professor Paul Goldstein who is quoted as saying “Trademark is the sleeping giant of intellectual property.”

The article describes the first round of trademark conflict on the Internet – cybersquatting – as having subsided after Congress passed the Anti-Cybersquatting Protection Act in 1999. [Comment: Of course, the article is silent about the still-ongoing related battle of typo-squatting, domain tasting, and web directory websites]. The new trademark battlegrounds are “gripe sites” (although with fair use and free speech pretty strong defenses, is this really a battleground?) and competitors purchasing a company’s trademarks as “keywords” (admittedly a very uncertain area right now – Eric Goldman’s Technology & Marketing Law Blog keeps close track of the ongoing trademark “keyword” decisions working their way through the courts).

The article adds a little bit of nostalgia by describing trademark searching in the “old days” (circa 1979) when examining attorneys would rifle through the wooden “shoes” at the USPTO’s search room organized in such descriptive categories as “grotesque humans” (e.g., the Pillsbury doughboy) and “human body parts” (e.g., the walking fingers for the Yellow Pages). Of course, the USPTO’s online searchable database has not only made searching for trademarks easier for attorneys, but also has made the job easier for the USPTO’s 390 examining attorneys – 85% of whom work from home.