By Ryan Morrison

Many of you have seen the terrific response to a cease and desist letter. (Thank you, Above the Law).

LASIS has exclusively obtained the latest salvo in the battle of West Orange, copied and pasted below.

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Greetings and Salutations Mr. Kaplitt,

First and foremost, thank you for taking the time to draft a response to our cease and desist letter. Unfortunately, it seems you hit the “send” button too early, and we have received what we can only assume to be an attempt to blow off some steam at your keyboard before carefully thinking through the matter.

As we are not, as it turns out, “a big meanie” we shall officially disregard your letter, and grant you another ten (10) days to respond. However, if we hear nothing further we can only assume that, despite your working on this matter “pro bono”, your client is overpaying for legal services.

On the slim chance you truly meant to send us what you did, I hereby respond to each of your numbered points:

1) Your first point noted the cost of creating and maintaining the government’s professional website (it is a nice website, isn’t it?) with the cost of your client’s rudimentary one. As if that mattered.

You see, after du Pont[1], a major trademark case by any standards, a list of factors were agreed on to help future courts ascertain whether two marks were, or were not, confusingly similar. Among the 13 factors (see here) –“cost”? Doesn’t make the list.

In a likelihood of confusion determination, marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.[2] Similarity in any one of these elements may be sufficient to find a likelihood of confusion.[3] In the instant matter, a website named westorange.info is quite likely to be confused by a user for its sound, meaning, connotation, or impression…and remember, a court only needs to find one. Somebody seeking info about West Orange would more likely than not believe that a website by the name of westorange.info was, in fact, the official, or at least, an official, website of the township.

The services of the parties don’t need even to be identical or directly competitive for courts to find a likelihood of confusion.[4] Rather, they need only be related in some manner, or the conditions surrounding their marketing must be such that they would be encountered by the same users — under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.[5]

Pop quiz: Why would a website that lists the town’s name, followed by “info,” not cause this level of confusion?

Plenty of case law explains the concept of “initial interest confusion”, that is, that the user goes to a site because of an initial interest, and thinking he’s landed at the right place, settles for the faux version’s offerings. This is what we believe is happening when people seeking information about the township are landing on your client’s website.

2) Your second point is that geographic locations can’t be trademarked as domain names, or something like that.

That geographic locations on their own are not protected marks is clear. Cape Cod couldn’t claim that I can’t start a Cape Cod Cool Crafts website, because the name of their town was protected. (Well, they could make that claim but it would be a rubbish claim.)

Again: What your client is operating is a website with the name of the town, followed by the word “info”. Anyone seeking information would likely believe that this was a city-government website. And that, in simple terms, is a no-no, Mr. Kaptlitt.

3) And let’s take a breath and a step back with all the “Constitution” shouting, shall we? Trademark disputes aside, it is well within reason that a court would consider stopping a website posing, intentionally or not, as an official government work as a “compelling government interest.” Further, we have kindly asked for your client to keep publishing the information it wants to – just do it under a name that is not deceptively similar to the township of West Orange. We are confident that we’ve employed the least restrictive means possible. (asking you, nicely, to stop it).

4) You ask which of the “federally protected rights” your client “may” have violated. Fair question. Trademark protection. Look it up.

5) You ask what in Sam Hill’s name was meant by my colleague’s request that you cease using the domain name www.westorange.info “or anything else confusingly similar thereto.” Gladly, my good man. You see, old chap, we must look to see whether our trademarks are confusingly similar. Those are various courts’ words, not mine. And he meant, “anything else that would confuse a normal person into thinking your client represents the township.” (Because he doesn’t. He ran for town council. He lost. Get over it.)

6) Your client’s property, the domain name, was purchased and is owned by him. But it can’t be used in the manner he’s using it, i.e., to disseminate non-official information– that seems to be official information — about West Orange.

Signed,

[Angry Gov. Employee]

P.S. Have you taken down the offending site yet?

P.P.S. This is a work of parody. I am just a recent law grad taking a break from studying for the bar to write a response to a letter I found inspiring. Much legal love, Mr. Kaplitt. <brofist>



[1] In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) [2] Id. [3] In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b). [4] See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i) [5] In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).