Thursday, January 12, 2012

Blogging and Trademarks--UPDATE

More news about the trademark infringement lawsuit filed by the New York Times against The Huffington Post which I blogged about here.  

I recently learned that the parties have reached a settlement. You may recall that Lisa Belkin had been writing the “Motherlode” parenting blog for the New York Times and subsequently wanted to continue some form of that blog after moving to the Huffington Post where she entitled her blog, “Parentlode.” You may also recall my prediction that “this case will settle in the near future.”

According to my source, the terms of the settlement have not been disclosed but the U.S. District Court judge signed off on an order dismissing the case (subject to being reopened in 45 days if the settlement is not consummated). However, Lisa Belkin herself suggests the terms of the settlement in her December 22 blogpost for the Huffington Post which is entitled:
Bye Bye, "Parentlode"! Announcing My To-Be-Named-By-You Blog Contest

Apparently, Lisa Belkin and the Huffington Post are throwing in the towel, as so many subsequent or “subordinate” trademark users/applicants often do, and are giving up trying to hold onto the mark. As Lisa Belkin explains in her Dec. 22, 2011 post: 

Things can get petty and prickly in the sandbox. Sometimes there's that kid who throws the sand around, and won't share toys, and picks fights instead of playing nicely.  What is a parent to do?

Well, you can fight back, but the end result will probably just be more thrown sand. Or you can take your child by the hand, smile benignly at the bully, then go off to the ice cream shop and have a delightful afternoon….

…You might have heard that The New York Times has been a little cranky about this blog lately. They seem to think I took their toy -- or something they believe sounds a little like one of their toys -- when I left the Times and moved to The Huffington Post two months ago.

… Still, we had a choice to make. We could keep fighting the suit, over a name that, frankly, we never really loved…. But that would involve my hanging around town next week with a bunch of lawyers, preparing for a deposition of me demanded by the Times, rather than attending my mother's wedding in Arizona. Mom is not keen on that idea.

It would also involve spending an indefensible amount of money, and enriching the lawyers (who are very nice; I've had a chance to get to know many of them lately, but still...) at the expense of better content.

… All we need now is a new name… (emphasis added).

This reaction to the infringement claim that Lisa Belkin describes illustrates at least three common responses I often see from entities accused of trademark infringement which are listed below (and can include my clients and my adversaries).

1. Submissions to the press of the accused party’s arguments, the merits of their defense, a public relations appeal on their behalf and a public relations attack against their accuser. I reproduced some of Lisa Belkin’s self-advocacy from her Dec. 22, 2011 post above but omitted additional text for the sake of brevity. In this case, Huffington Post had it easy because they are a member of the press; their story did not need to be pitched to anyone.

2. The accused party ultimately concludes that the high cost to defend their right to use the mark is not worth the ability to continue adopting or using the mark, regardless of the merits of their arguments and their available evidence. Unless the accused trademark holder is a Coca-Cola® with unlimited resources, the accused has invested a significant amount of funds and consumer goodwill into the mark or the accused is the producer of a hot new product which requires the mark to retain its value, this is generally the most sensible conclusion.

3. The mandatory participation in “discovery,” i.e. being deposed or required to submit written answers to written questions and documentary evidence, promptly deters the accused from wanting to continue defending their trademark adoption. Lisa Belkin expressed this when she stated that she was not prepared to miss her mom’s wedding to be deposed. Accordingly, initiating discovery after filing a trademark infringement proceeding is a highly effect strategy for many trademark infringement plaintiffs.

The moral of the story is to always consult a trademark lawyer when naming a product or service to be offered in U.S. Commerce and to listen to them.

Alex Butterman is a trademark attorney with Staas & Halsey LLP (, a Washington, D.C. IP boutique law firm, and a former trademark examining attorney at the U.S. Patent and Trademark Office. Alex has been assisting U.S. and foreign businesses of all sizes in a wide variety of industries in intellectual property matters since 1995. Alex is admitted to the bars of Washington, D.C., New York and New Jersey and also is an active member of the International Trademark Association. Alex can be contacted at work directly by e-mailing him at
The opinions expressed are those of the author and do not necessarily reflect the views of Adrienne, his firm, its clients or Adventures in DIY. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

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