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Unfortunately, there have been some blog postings and other
communications regarding this firm’s application for the use of the mark “CyberLaw”
with the United States Patent and Trademark Office. Because many of these communications
are lacking in providing complete and accurate information, the firm issues the
following statement.
A blog post issued by EFF’s Corynne
McSherry criticizes the firm’s application. “Corynne McSherry is Staff Attorney
at EFF, specializing in intellectual property and contract issues.” There are important facts
and statements deserving of further review that Ms. McSherry fails to disclose.
Virtually all the facts that are relevant to this issue are publicly available.
Ms. McSherry claims the firm is “threatening other lawyers
with legal action based on this silly ‘mark.’” First, no legal “threats” have
ever been made, to anyone. The firm issued one informal notice to one attorney,
Michael Grossman, about a potential dilution of the name of the firm’s blog,
CyberLawg™. Mr. Grossman thereafter hired Mr. Martin Schwimmer to represent him.
After one e-mail communication that included both Mr. Grossman and Mr.
Schwimmer, the previously private discussions were publicly disclosed by
either Michael Grossman or Martin Schwimmer.
Corynne McSherry then “presumes,” without any factual basis, that
this firm has other firms in its “sights.” Unsurprisingly, Ms. McSherry shows no
evidence for this comment because there is absolutely no factual ground for
such a statement.
Ms. McSherry goes on to state: “an IP lawyer should know that
courts (and trademark examiners . . .) don't look kindly on efforts to abuse trademark law to
control everyday language.”
This statement is misleading for a myriad of reasons. First,
the suggestion that the application is an “attempt to control everyday language,”
is overbroad and inaccurate. As in most trademark applications, the firm’s
application is for only one “class” of protection. In this case the class is #45,
defined by the USPTO as “services
rendered by lawyers to individuals, groups of individuals, organizations and
enterprises.” Services that fall outside that class would be wholly unaffected.
Ms. McSherry’s concern that “Stanford's Center for Internet and Society, with
its Cyberlaw Clinic” or “Berkman's Center for Internet and Society” would
somehow be affected is simply false. Those academic organizations clearly do not fall
within the class of goods for which CyberLaw™ applied for trademark protection.
Finally, Corynne McSherry’s statement that “trademark examiners .
. . don't look kindly” on such applications is easily dispelled with recent history. Not
only has the USPTO previously granted rights in the term “CyberLaw,” it has
done so as recently as 1996. The mark was granted to Attorney Jonathan Rosenoer of Greenbrae, California
in 1996. Mr. Rosenoer let his protection expire in 2000. All such information
is publicly available to Ms. McSherry or anyone else at the USPTO web site.
While the firm appreciates free speech, it also believes
that speech that ignores relevant facts is not appropriate, particularly when such statements are harmful to professional reputation. The firm stands by its
application, which was lawfully filed with the USPTO, seeks to protect only
those services that this firm provides, and which seeks protection of a term
that the USPTO itself has previously found to be protectable.
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