Ok, continuing on with the story.
It's so hilarious the long read is worth the Brother's reply!
Whole thing came about when they notified the company of intent to build "Black".
This was the shocking reply from company attorney .....
...................................................................................
....................................................................................
Dogbert Answers RTV Email
Letter Number 3
The Rocket Formerly Known as Black
I have a rocket that has no name. It is referred to only by the symbol or by the phrase "The Rocket Formerly Known as Black" or (TRFKAB). This is a pretty long story. I apologize. I'll try to make it as short as I can.
A company called Genuity has a product called Black Rocket. It isn't a rocket at all, but an Integrated E-business Platform, whatever that is. I really didn't care -- but their advertising featured a sleek, cigar-shaped, retro-styled, black rocket that I just had to build for myself. I found pictures of the icon on the Internet, and as is my custom, I documented both the build of the rocket and where the idea came from. So I posted the pictures on this web site, simply to give a comparison between the rocket I was building and the one I first saw.
Sometime during the build of I had the great idea; Hey! I'll bet the people at Genuity will think this is really cool! I thought their employees might get a kick out of seeing a flying rocket like the one in their advertising. Maybe they'd even like it enough to use it in their advertising.... Who knows? Being the enthusiastic chap that I am, and always eager to show off my handiwork, I wrote to the kind folks at Genuity several times trying to pique their interest.
I also politely asked them to voice any reservations they might have over me calling my project The Black Rocket because of its similarity to the name of their product, Black Rocket. It would have been simple and neighborly for them to do so. Instead of hearing from them, I received a threatening letter from Merton Thompson, an intellectual property attorney from the nation's top patent litigation firm, Fish and Richardson, P.C.:
From: Merton Thompson
Sent: Tuesday, September 17, 2002 1:21 PM
To:
[email protected]
Cc: Merton Thompson
re-send of correspondence
-----Original Message-----
From: Merton Thompson
Sent: Friday, September 13, 2002 2:48 PM
To:
[email protected] <--- Editor's Note: See this? It's WRONG!
Cc: Merton Thompson
Subject: BLACK ROCKET
VIA EMAIL September 13, 2002 Bradley Vatsaas
[email protected]
Re: use of BLACK ROCKET
Dear Mr. Vatsaas:
We represent Genuity Inc. in intellectual property matters are writing to you on behalf of Genuity.
Thank you for your email message dated September 4, 2002, to Susan Kraus, Senior Vice President, Corporate Communications. We have reviewed your web site at http:/www.vatsaas.org/rtv/arsenal/bradrocs/black/black.aspx and have noted your use of Genuity Inc.'s (Genuity's) Black Rocket trademark, Black Rocket design mark (the rocket design logo you found interesting) and marketing material relating to Genuity's Black Rocket product offerings.
As you are aware, Genuity has incurred considerable expense in using and promoting its Black Rocket trademark and Black Rocket design mark since Genuity launched its flagship service offering in September of 2000. In addition to acquiring common law trademark rights in these marks, Genuity has also incurred additional expense by filing trademark applications with the United States Patent and Trademark Office and in numerous foreign countries. Under trademark law, Genuity, as owner of the Black Rocket trademark, must take action in order to prevent the dilution of its marks or the unauthorized use of our marks.
While we are pleased that you have found Genuity's advertising compelling, it was never our intention for the Black Rocket to take flight. In order to avoid confusing our customers or potential customers who might otherwise believe that Genuity sponsors or is in some fashion affiliated with your endeavors, we must insist that you cease all use of Genuity's Black Rocket trademarks and copyrighted marketing materials immediately. In addition to requiring that you cease and desist using our marks, posting or referencing our service offering and the marketing materials on your web site, we must also insist that you refrain from affiliating the rocket device that you intend to launch in Phoenix, Arizona during the weekend of October 12-13, 2002, or any other rocket device, with Genuity and/or its Black Rocket marks and products.
Please be advised that Genuity is prepared to take whatever measures are necessary to protect its valuable Black Rocket trademarks.
Very truly yours,
Merton E. Thompson
Fish & Richardson P.C.
225 Franklin Street
Boston, MA 02110-2804
[email protected]
Direct line: 617-956-5910
Fax: 617-542-8906
www.fr.com
This torqued me off for several reasons:
They didn't need hired muscle; all they had to do is ask. I can only imagine what Genuity paid to have that letter drafted. It's free to hit the REPLY button.
If no income is solicited or earned by using someone else's mark, this use is not normally infringement. Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are offered, there is no commercial use, hence no infringement.
They went too far. A common law trademark like Black Rocket is NOT the same as a registered trademark Black Rocket. The registration is not yet granted, so their exclusivity claims are not as far reaching as they portray. And even if it was , trademarks do not negate First Amendment rights, so they can't prohibit me from making any references to Genuity or their products, like I'm doing now, or to parody their advertising.
Genuity's Scope of Submission (a legal term) doesn't extend to rocketry. I can't go to market with an Integrated E-business Platform called Black Rocket, but if I want to paint my rocket black and name it that way, they have to live with it. I could paint my butt black and call it Black Rocket, too, and they couldn't do anything about that, either.
The letter above makes it sounds as though Genuity has a stranglehold on the black rocket name. Not so! According to the records database at the U. S. Patent and Trademark Office, the BLACK ROCKET CORPORATION of San Francisco, CA (ironically, a media advertising firm) obtained their registration of the mark in December of 1999 - almost a year BEFORE Genuity even filed. As a result, the service mark (not trademark) that Genuity is using is very narrow. (click HERE for proof!)
The bottom line is that I could legally continue calling "Black Rocket" and post it on the web site without fear of repercussions. But at this point I wouldn't do it just on the remote chance that someone thought I was promoting Genuity or their product. No free advertising from me.
For the record - I have no gripe with Merton Thompson (who has since left Fish & Richardson for Berns & Levinson). From his picture he looks like a really nice guy who would probably love to come and see the rocket fly. I feel for guys who have to do asinine, jerky things as part of their jobs.
Let it be known, however, that even though I may not hold any individual corporate lacky responsible for being compelled to comply with an idiotic decision or issue an empty threat, that will in no way stop me from pulling on his nose.
Our response follows.
Bradbert replies: (I'm worked up enough to write this one myself!)
....................................................................................
To: Janet Ledbetter, Vice President Marketing - Communications and Product Marketing, Genuity Inc
Cc: Susan Krause, Senior Vice President - Corporate Communications, Genuity Inc.
Cc: Merton E. Thompson, Fish & Richardson P.C.
Dear Ms. Ledbetter
I would like to start by setting your minds at ease and inform you that, as of 09/17/02, The Rocket Formerly Known as Black (TRFKAB) will, for an undetermined period of time, have no name but will be referred to only by the symbol .
I must also express my admiration for your insightful decision to disassociate Genuity from my project "in order to avoid confusing our customers or potential customers" as "it was never our intention for the Black Rocket to take flight." Presenting a rocket icon that can actually fly may erroneously bring to mind such negative adjectives as 'sleek', 'agile', 'spectacular', or 'lightning-fast'. As an Internet platform supplier, it is clearly in your best interest to recoil from these attributes as vehemently as you would from a child puking in a crowded elevator. The ingenious creation of an utterly inert Black Rocket icon displays an amplitude of innovative flair that must certainly be rare in the imaginative circles of branding and advertising.
I also thank you for the stark lesson in shrewd business tactics you so ruthlessly delivered in the letter from your legal council. It was a bold stroke, your commanding me to "cease and desist using our marks, posting or referencing our service offerings and the marketing materials on your web site." Had I continued to display your advertisements and provide direct links to your corporate web site, one can only speculate at the detrimental consequences that could result from such exposure - like commerce.
I should inform you that one of the ads I previously had on display was first seen on the CNN web site, accompanying a story on Osama bin Laden. No doubt you will engage the esteemed barrister Merton E. Thompson of Fish & Richardson P.C. to issue a cease and desist order, thereby preventing any unfortunate associations between Genuity and terrorism - although it may not be clear whether to send the correspondence to CNN or al Qaeda. Just make sure Merton checks the email address as he appears to have difficulty with cut and paste.
All this leaves me with the problem of selecting a permanent name for . In the remote likelihood that your scope of submission actually extends to model rocketry, it is my hope that further legal entanglements can be avoided through pre-emptive consultation with you and your legal counsel. I would like to know if there are any other innocuous combinations of commonly used words from the English language which, when shown together, may infringe on one of your valuable protected trademarks.
Below is a list of potential candidate titles:
Block Racket
Black Rocnot
Piceous Rocket
Svarte Rocket
The Rocket Whose Color Is Due To The Fact That It Absorbs All Colors Of Light And Gives The Appearance As Such
The Rocket Whose Color Is That Which Is Described On The Album [after the album previous to the Black album] From The Artist Formerly Known As Prince While He Himself Was Still Known By The Name Which He Was No Longer Known By And Is Now Known By Once Again
The Pot That Calls The Kettle Rocket
Couldn't Market My Way Out of A Paper Bag Rocket
As Creative As A Warm Pitcher Of Spit Rocket
Twitching Sphincter
Janet Bedwetter
Mrtonssan (kind of like farfegnugen)
Gen-Ptoooo-ity
Genscrewyoutooity
And the current frontrunner:
Merton
In anticipation of the future use of the Merton trademark, Rocket Team Vatsaas intends to acquire common law trademark rights in these marks and will file trademark applications with the United States Patent and Trademark Office and in numerous foreign countries. Under trademark law, RTV, as owner of the Merton trademark, will be prepared to take whatever measures are necessary to protect its valuable Merton trademarks. In order to avoid confusing our friends, creditors, and distant relatives who might otherwise believe that RTV sponsors or is in some fashion affiliated with your endeavors, we must insist that you be prepared to cease all use of RTV's Merton trademarks and copyrighted materials. We also suggest that Merton Thompson change his name to Mark, in which case Rocket Team Vatsaas will take whatever measures are necessary to protect its valuable trademerton.
In conclusion, I wish you the best of luck in all your future advertising endeavors. I have no doubt that, under your unrivaled visionary leadership, each successive campaign will be even more obtuse and incomprehensible than the ones that came before.
Sincerely yours,
Bradley A. Vatsaas
Fish and Cutbait, DMA*
*Doesn't Mean Anything
Getting complicated just to build a stupid rocket.....ain,t it?
Saga will continue!!!
oint: It is worth a 2nd read!
