You are reminded, once again, that the "court records" provided on this web site (normally with a number (such as 7-6) in the title, signifying that that particular court record was dated July 6, 2007- all dates occurred in 2007, so the 2007 part is omitted) are simulated (fictional) court records. In other words, read these "court records" (if you want to read them at all) for the detail they provide, based upon the fictional facts.

Court records are often called "pleadings". Concerning this pleading: a complaint begins with jurisdictional and identification allegations, which in this case are set forth in the first two paragraphs.

Thereafter, the pertinent facts are set forth, in general and not in detail. You will note that Small is emphasizing priority of registration with the USPTO, rather than absolute priority of use of the name TaxHQ. As we will see, Big will take the opposite approach.

The plaintiff in a trademark infringement case has the option of seeking a declaratory judgment, rather than attempting to enjoin the use of the mark in question by the defendant. Small has, in count 2, elected to seek a declaratory judgment, which minimizes the time urgency of the proceeding, giving the parties time to sort out their positions without being immediately plunged into the expense which normally accompanies an injunctive proceeding.

It may be that Small is motivated, as well, by a desire to have its cake and eat it too. In this regard, filing of the matter in the local court (the U.S. District Court for the Western District of Washington) eliminates the possibility of having to defend in a distant federal court, with all the extra expense such a defense would require, while still allowing the parties to explore settlement if the time urgency of a preliminary injunction is not involved.

As framed in the complaint, plaintiff would seek (at maximum) cancellation of the "Big TaxHQ" mark and assurance that the "TaxHQ" mark use would be restricted to newsletter use, thus eliminating the likelihood of confusion. Realistically, Small and Cpaatty would need to understand that Big would be unlikely to settle if the more important of its two marks ("BigTaxHQ") became unusable, so that it would be unable to use TaxHQ for anything other than a newsletter.

It is still true, however, that the complaint as framed would be less likely to eliminate settlement entirely if there were any possibility of settlement in the first place, since there are no inflammatory allegations and nothing is said beyond what is actually necessary to state a cause of action (legal-speak for a set of facts which, if true, would justify the grant of relief by the court). Home       TM Overview       TM Case Index

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