Re: Re: Extropian Agroforestry Ventures Ltd.
Mon, 15 Feb 1999 13:53:54 EST

I'd written,

>> Again, the question as regards infringement (though not dilution) is
>> or not the use is likely to confuse consumers as to the source, origin, or
>> affiliation of ExI. Some uses of "Extropian"--even by huge, for-profit
>> corporations--may not go that far. Consider, for example, "Not Extropian
>> Cremation, Inc."

By way, I suppose, of counterexample, Mike Lorrey wrote:

>[The owner of] has succeeded in court to force
>to put a disclaimer
>on every one of its pages that Network Associates,, and the US
>are not affiliated with

But, of course, those two parties were in exactly the same line of business. Consumer confusion really did look likely. The MacDonald's examples to which Mike later alluded better prove his point, I think, that aggressive trademark holders can push the fuzzy boundaries of consumer confusion a long way. As Mike says,

>It tends to be a matter of who has the most money.

Mike adds an important but not dispositive element to the analysis:

>In general though, it is the intent to which the name is used which
>decides the acceptability of its use. Using
>a name for a purpose which overlaps that of the original trade name owner is
>definitely treading on thin ice.

I'd massage that point to say that intent *can* prove very important but that it does not alone resolve the question of infringement. Courts use a multfactor test, only one element of which considers intent. Innocent parties can be held liable for duplicating non-distinctive marks. Contrarywise, even parties who intentionally duplicate an existing mark can be found to have put it to a non-infringing use. (Again, I caution that I am not here addressing dilution.)

>Given that ExI is, shall we say, not the most
>well endowed think tank, someone could probably start a company called
>Extropian Holistic Nose Pickers, Inc. and not give a fig about what ExI
>thinks or says about it, since it seems like they probably can't afford
>to contest it in court.

In theory, a contigency-fee attorney might take ExI's case. A party suffering infringement can recover damages, the defendant's unjust profits, costs of the action, and, in extreme cases, treble damages and attorney's fees.

T.0. Morrow