joegratz.net

July 3, 2005

Idiotic Trademark Abuse

This article in today’s New York Times discusses the trademark claims of Leo Stoller.

He’s the proprietor of rentamark.com, a name which will make any trademark attorney giggle. (You can’t “nakedly” rent out trademarks; if you do, you lose your rights.) Mr. Stoller is in the business of “licensing” (not renting — no, never renting) numerous common English words for use as trademarks, then attempting to stop anyone else from using those words — including, just to sample at random, “choreographer”, “news”, and “adult entertainment” — in product names.

Happily, the Times reporter called Mark Lemley, and he got to the heart of the issue:

“It’s based on a misunderstanding of how trademark law works,” said Mark A. Lemley, a professor at Stanford Law School. “Trademark law doesn’t give you exclusive rights in words, only the right to prevent consumer confusion. He’s not in a position to claim that his mark is unique or famous. It’s a common English word that’s already been used in many contexts as a trademark by others.”

Predictably, every time Mr. Stoller has brought one of his claims to court, he’s lost. What’s shocking is that Stoller seems to be making a living by threatening infringement actions against businesses and getting small settlements that cost less than going to court.

UPDATE: It looks like he has a long track record. And check out the complaint in Columbia Pictures’ declaratory judgment action against Stoller following his threat. The attached response letter from Aimee Wolfson, Columbia Pictures’ VP for Legal Affairs, is a superb smackdown; it’s one of the first big-studio legal documents I’ve read that I’ve enjoyed.

Disclaimer Haiku:
West wind seems to say,
"This is not legal advice;
I'm not your lawyer."

(And if you're a client with whom I have a preexisting attorney-client relationship, this still isn't legal advice.)

In case you're wondering, this blog is also not intended as advertising, as a representation of anything but my personal opinion, or as an offer of representation.

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