Published by LawTechie - November 9, 2011 - LawTechie

Trademark LawThe New York Times has sued Huffington Post for intellectual property infringement arising out of its use of the name Parentlode for its blog on parenting (the New York Times owns the trademark Motherlode for its own column on parenting). MediaPost reports:

The newspaper company argues that the name of the new HuffPo section — authored by Lisa Belkin, the same writer who authored the Motherlode blog for the Times — infringes trademark.

What is interesting about this particular trademark law case is the issue of author Lisa Belkin (original author of Motherlode for the New York Times) having switched over to the Huffington Post to use the allegedly infringing trademark. Certainly to the extent that the New York Times can prove trademark infringement, willfulness — and the extra damages that come with that — is not far off.

So the question is whether Parentlode and Motherlode are “substantially similar” for trademark law purposes. The services are identical — there is no question there — so the only question is with regard to the similarity of the names. As Prof. Eric Goldman told MediaPost, “It’s not a direct knockoff, but there’s certainly some semantic overlap.” I think that it is more than that.

Given the identical services, the two names give a substantially similar impression apart from the semantic overlap of the word “lode.” With regard to the Polaroid Factors (New York’s trademark law infringement standard) we can certainly see a potential for confusion among consumers, and there would probably be proof of actual confusion among previous readers of Belkin’s column. Finally, I would have to disagree with the following point on trademark law in general:

Goldman also questions the strategy of litigation here, pointing out that the expense of litigation might not be worth the potential benefit. “The key to either blog’s success is not in its name,” he said.

There is no question that litigation is, more often than not, a needless expense. However, when it comes to intellectual property, failure to police your trademark and go after infringers will immediately dilute the value of your intellectual property and likely prevent you from stopping intellectual property infringement of the same mark in future instances.

LawTechie is a blog focusing on trends in tech and digital media. Areas covered include intellectual property, cyberlaw, venture capital, transactions and litigation as they relate to the emerging sectors. The blog is edited by the firm's partner Tim Bukher with contributions from the firm's experts in their respective areas of law.

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