[TriLUG] [Not a joke] AOL is suing me!

[Jeremy Portzer]

On Thu, 2003-03-20 at 10:53, Tarus Balog wrote:
> 
> Sinner from the Prairy said:
> 
> > We just got a letter from Arent Fox, attys for AOL, telling us that your
> > page at http://ibiblio.org/sinner/video/messenger_en.html misuses the
> > words "Instant Messenger" their trademark.
> 
> This is not the case according to the US government, as far as I can tell.
> According to TESS:
> 
> http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=75497543
> 
> The PTO is not going to register "Instant Messenger" to AOL:
> 
> Status: Office action continuing a FINAL refusal to register has been mailed
 
Actually, that's probably using the legal usage of "continue" which
means to "put on hold" or delay.  (Think of the "PJC" -- prayer for
judgement continued -- that people often are granted for speeding
tickets.  This is an agreement that your case will be held in limbo --
continued -- and then dropped, unless you get another ticket.)

So that might mean that the USPTO has delayed their final refusal,
perhaps in response to an appeal/challege from AOL.  Here's some
information about final refusals and appeals: 
http://www.uspto.gov/web/offices/tac/doc/basic/afterapp.htm

Also, here's an excerpt from
http://216.239.39.100/search?q=cache:UJGGD1r56sUC:law.utoledo.edu/faculty/Adjuncts/DM-Federal%2520Trademark%2520Registration%2520Practice%25201.ppt+trademark+Office+action+continuing+a+FINAL+refusal+to+register+has+been+mailed&hl=en&ie=UTF-8

"KEEP IN MIND ...

"Although federal registration confers important procedural and
substantive rights upon the owner or a trademark, registration does not
create a trademark in the U.S.  A refusal by the USPTO to register a
trademark does not preclude the owner from her right to utilize the
trademark.  Use, not registration, creates the underlying exclusive
right to a trademark.  The U.S. is one of very few countries in the
world where this is true."

In other words, just because the trademark isn't registered by USPTO
doesn't mean they still can't sue you for infringement.  Though I'm sure
it could play a factor in your defense.

IANAL, IDNPOOTV*

--Jeremy

-- 
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| Jeremy Portzer       jeremyp at pobox.com       trilug.org/~jeremy     |
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* I am not a lawyer, I do not play one on TV
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