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InformationWeek Blog Slams Nordstrom for Alleged TTAB Conduct

Interesting story today in InformationWeek’s Global CIO Blog. Citing a Cato Institute newsletter, it accuses Seattle-based Nordstrom, Inc., of bad conduct before the Trademark Trial and Appeal Board.

The blog tells quite a story, one that starts with the PTO erroneously accepting Nordstrom’s intent-to-use application for a trademark that is confusingly similar to a registered trademark owned by two Colorado women, and ends with Nordstrom using its financial might to beat back the registrants who believe they have been wronged. I don’t want to re-tell a re-telling, so check out the post yourself. However, here’s the punch line — from the unhappy trademark owners to the Commissioner of Trademarks:

“We filed for a trademark so that we could reasonably secure ourselves from someone else using that name. If your office cannot protect us from this, why would we, or anyone, file an application? The law is supposed to be accessible to all people. Just because Nordstrom has money and we do not does not give them the right to use the name for which we have the trademark…. [T]he cost to work through the TTAB will easily exceed $70,000 just to fix the problem The Trademark Office made in the first place. We understand that we must stand behind and police our trademark. How is this possible for a small company to stand up to a behemoth like Nordstrom for $70,000? Your office has ensured our demise.”

Decide the facts for yourself. Here are links to the subject registration; the prosecution history of one of Nordstrom’s intent-to-use applications; the TTAB docket to Nordstrom’s now-dismissed cancellation proceeding; and the TTAB docket to the registrant’s ongoing opposition proceeding.

Posted on February 10, 2009 by Registered CommenterMichael Atkins in , | Comments5 Comments | References1 Reference

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  • Response
    Response: Nordstrom: Don't Hate Us Please (Idiot Version)
    at Simple Justice on February 14, 2009
    To be tested by Nordstrom twice in a week is either a testament to the power of information or a demonstration of their corporate belief that we are such blithering idiots that we will buy any piece of crap they throw against the wall.

Reader Comments (5)

While I certainly can empathize with their plight (David vs. Goliath), it seems that they would have faced the same challenge from Nordstrom even if the PTO had done its job and properly refused registration in the first place based on likelihood of confusion. The small business wrongly assumes that they would not have been embroiled in a legal dispute had the PTO properly rejected Nordstrom's application. While they might not have had to file an opposition, Nordstrom still could have (and most likely would have) filed to cancel their registered mark (and indeed they did, although that proceeding was dismissed because of the opposition that had also been filed -- and in which Nordstrom added a counterclaim for cancellation). A cancellation petition is a possible challenge that every registrant faces at any time. It is unfair for them to blame the PTO for Nordstrom's ability to exercise its financial muscle to challenge the legitimacy of their trademark registration. Put the blame squarely where it belongs -- against Nordstrom.
February 10, 2009 | Unregistered CommenterRyan Gile
I have two comments: First for Mr. Gile sure a registrant always faces a cancellation pettion. But how much nicer it is to have the PTO fight your battle for you in the first instance. Faccd with a PTO citation that their mark was confusingly similar to an earlier filed mark wih earlier dates of use Nordstrom' would be far more likely to captitulate if even nominal use could be shown by the registrant. Which does not excuse their sleaziness in pursuing the matter. One can only hope that the outcome includes a 70K payment to the small folks.

Aren't you wimping out a bit by not expressing any view yourself? Sure Nordstrom's is a highly visible Seattle client but wrong is still wrong. Don't you normally express an opinion rather than telling readers to decide for themselves?
February 16, 2009 | Unregistered CommenterJohn R Troll
Yeah, you're probably right.

I was asked to comment about this case today by World Trademark Review. (I'd expect the web story to come out tomorrow. I'll link to it when it does.) I was asked if the PTO's error signaled some kind systemic problem. I said no, this was just human error. It shouldn't have happened, but I don't think it illustrates the system is broken.

I also pointed out that abandonment is always a ground for cancellation. The PTO didn't bring the petition for cancellation; Nordstrom did. I really have no idea if there's merit to that claim, but if anyone's running up the registrant's fees, it's Nordstrom and not the PTO.

Finally, I bit my tongue on what I wish would happen -- that the Lanham Act would award attorney's fees to the prevailing party, and the Trademark Trial and Appeal Board would similarly award fees. To me, there's nothing like the possibility of a party's having to pay its opponent's attorney's fees (as well as its own) to discourage a party from prosecuting a bad claim. That's really what should change here. Wouldn't that help level the little guy vs. giant corporation financial playing field? Or would it end up discouraging the little guy because even if it's 99% sure it's right, that 1% chance of paying its lawyer PLUS its opponent's lawyer would be enough to discourage a meritorious claim? The specter of fees awards backfiring in this manner was enough for me to hold back on promoting this idea without further thought. That said, if I wrote the rules, I'm pretty sure winners would recover their fees.

Thanks much for your comments.
February 16, 2009 | Registered CommenterMichael Atkins
You're right, Michael, there's nothing that would introduce some sanity into trademark law like a clear fee-shifting provision, i.e., something a lot better than the one that is in the Lanham Act now and which would give judges much less discretion.
February 20, 2009 | Unregistered CommenterRon Coleman
It has become clear to me being in a similar situation where the trademark office should have never granted a trademark to someone in our case either, the trademark office is simply just rubber stamping applications without even abiding by their own rules and laws. Our battle has been going on for close to 4 years now and is basically bankrupting our business. There are laws that are suppose to protect us and our case this is a foreigner who has obtained a trademark by fraud, using this trademark outside the categories she filed for. She is now running around trying to lay claim to peoples businesses that she has no right to, but still it costs thousands upon thousands of dollars to fight. Since you are a lawyer why don’t you get all of the small businesses to ban together for a class action lawsuit against the trademark office? This would clearly send a message not only to the trademark office but to congress. We need people to stand up to these government offices who are funded by our tax dollar to say enough is enough, do your job.
February 14, 2011 | Unregistered CommenterA. Baldwin

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