Commentary

Judge Keeps Goofy Trademark Suit Alive

A federal district court judge in Chicago has allowed Jones Day to proceed in its ill-conceived lawsuit against Blockshopper.com, accusing the online real estate publication of trademark infringement for having linked to the law firm's Web site.

But a copy of the decision that was made available this morning shows that the judge temporarily kept the case alive on narrow procedural grounds. Federal district court judge John Darrah of Chicago ruled that dismissal wasn't legally appropriate at an early stage of the proceedings -- the case is only two months old -- because Jones Day and Blockshopper disagree on the facts.

Crucially, they differ about whether it's possible that Web readers might have been confused by Blockshopper's links. So Darrah ruled that Jones Day is entitled to have its day in court to try to prove its assertion that Blockshopper's links to the 2,300-lawyer mega-firm somehow led Web users to believe that Jones Day endorsed the site. "It cannot be said, at this pleadings stage, that Jones Day's allegations of confusion are implausible," he wrote.

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Darrah's wrong about that. It's completely unrealistic.

Regardless, the order now means that Jones Day needs to figure out how to prove that Web users didn't understand that online publications link to sites they're not affiliated with.

If Jones Day really thinks it can find focus groups of otherwise rational people who will say they were confused by Blockshopper's links, the law firm is hopelessly out of touch with digital media.

Consider, other companies have had problems proving confusion in much closer cases. Geico, for instance, lost its lawsuit against Google when a court found the insurance company hadn't proven that consumers were confused when they were served ads for rivals after typing "Geico" into Google's query box.

Meanwhile, the lawyers who run Jones Day really need to ask themselves what they hope to accomplish by wasting everyone's time and resources by continuing to prosecute this case.

1 comment about "Judge Keeps Goofy Trademark Suit Alive ".
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  1. Steve Feingold from Private Law Firm, November 28, 2008 at 4:22 p.m.

    I respectfully suggest that you are missing the point. The real estate company was giving this information because they knew saying that this many individuals from the largest law firm in town would have pull in convincing other people that they were connected. It is not so far fetched to think that perhaps Jones Day has some relationship with this company, such as representing them or some other connection. Certainly, as a lawyer I am constantly told by clients that they don't want me to put on my bio that I represent them in a particular case even when that case is public.
    Also, consider that Jone Day may have clients who actually compete with the firm doing this advertisement. THis use can cause tension with clients.
    We all understand the concept of professional discretion based on not wanting to be associated with people or entities unless I want to be so associated. Isn't that what "affiliation confusion" is all about?

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