The

Undeniable

Ruth

®

…and the Ruth shall set you free!

  • Law Student’s Take on the Zebra TM Dispute

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    Ruth Carter

    Disclaimer: I am not a lawyer.  I am a law student.  In accordance with ABA policy, this blog should not be viewed as legal advice.  It is simply my experiences, opinions, and stuff I looked up on the internet.

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    Daniel Rothamel, a.k.a. the “Real Estate Zebra,” is a real estate agent and blogger in Virginia.  He’s being sued by The Lones Group Inc. in Bellingham, Washington, a company that helps real estate agents market themselves.  The Lones Group writes the “Zebra Report” and “Zebra Blog.” Their suit claims that Rothamel is infringing on their trademark and their zebra theme trade dress on their website.  In its complaint, The Lones Group is seeking over $75,000 in compensatory and punitive damages, plus attorneys’ fees for violations of Washington State law, federal law, and common law.

    Under the Lanham Act (federal trademark law), a trademark or service mark includes any word, name, or symbol used in commerce to identify and distinguish the source of goods and services.   Trademark rights allow a company to prevent others from using their mark in commerce because it will create consumer confusion.  When a company registers their mark with the U.S. Patent and Trademark Office (USPTO), they can exclude anyone in the country from using their mark. The first person to register the mark, regardless of when they started using it, gets national protection for the use of their mark.  If someone else was using the same mark before they registered their mark with the USPTO, that company can keep using the mark, but only within the area where it was using it when the other company registered the mark.  Without registration, a company can only exclude others from using their mark where they have used their mark in commerce.

    According to the complaint, The Lones Group has been publishing its newsletter, “The Zebra Report” since 2005 and has been writing its blog, “The Zebra Blog” since November 2007.  I looked up Rothamel’s domain information and it appears that he’s had his blog since October 2006.  A quick word search on the USPTO website showed that there are no registered trademarks for “Lones Group,” “Zebra Report,” “Zebra Blog,” or “Real Estate Zebra.”  If there are no registered trademarks or trade dresses, The Lones Group can’t claim automatic national protection for their marks.

    It appears that The Lones Group is trying to establish priority of use of their mark of “Zebra Report” and the use of zebras on their website to claim that they can stop Rothamel from having his blog.  Rothamel has priority over the use of “zebra” in connection with a blog and the real estate industry.

    I see two big issues with this case.  First, I’d argue that The Lones Group and Rothamel have products that are too different for any consumer to be confused.   Rothamel is a real estate agent and The Lones Group helps real estate agents with marketing.  There’s no likelihood of confusion.  Based on what I’ve read from the real estate industry, there has been no confusion.  Second, the marks themselves don’t look that similar.  The Lones Group’s zebras are real pictures of zebras and Rothamel’s zebra is a cartoonish drawing of only a portion of a zebra.

    The Lones Group has filed the lawsuit against Rothamel and the agency he works for, Strong Team Realtors.  The Lones Group is probably going after the realty company because they have more money than Rothamel, but I think their case is weak.  Unless Strong Team Realtors is paying for his blog, I don’t think they can be implicated in this case.

    Additionally, if this case goes to trial, The Lones Group may have the burden of proving that Rothamel’s blog counts as commerce.  There must be a bona fide offer for a sale to qualify as using a mark in commerce.  Rothamel writes about being a real estate agent, but I think there’s an argument that the blog itself is not “in commerce.”  Rothamel mentions his employer but it doesn’t look like his promoting himself as a real estate agent.  I have not read every blog post on his site, so I could be wrong.  He does not seem to be selling any advertisements on his blog either.  Having a website, by itself, is not sufficient evidence to be in commerce.  If Rothamel’s use of “zebra” is not in commerce, it can’t be a violation of the Lanham Act.

    I also think The Lones Group has a jurisdiction issue in regards to the claims under Washington state law.  The jurisdiction rules require you to have sufficient contacts with a state in order to be sued there.  Rothamel lives in Virginia and is a licensed realtor in Virginia.  The fact that his website is accessible to people in Washington, with nothing more, should not be sufficient contact with the state for Rothamel to be sued there under the state law.

    Here’s what I think is really going on.  The URL for The Lones Group’s “Zebra Blog” is http://thelonesgroup.wordpress.com.  I think they want Rothamel’s domain (http://www.realestatezebra.com) and possibly his Twitter handle (@realestatezebra), and that they’re afraid he’ll say no if they offer to buy them off him.  If that happened, they wouldn’t have a prayer if they brought a trademark infringement case.  I think they’re hoping for a settlement where they get his domain in exchange for dropping the lawsuit.  And it looks like their approach has worked because Rothamel posted a blog tonight in which he shared a letter offering to stop using his domain, Twitter handle, and any reference to himself at the “Real Estate Zebra” in exchange for them dropping the suit.

    Damn it!  I hate it when it appears that people are misusing the law to try to force people to give them what is not theirs to take.  I think Rothamel had a winnable case but he I’m guessing he probably couldn’t afford the potential legal fees if the case went to trial or worse, if he lost.

    While I heard about this situation through my friend Jay Thompson, I don’t know Daniel Rothamel or anyone at The Lones Group, nor do I have any personal interest in the outcome of this case.  Based on the information in the complaint, my own research, and the knowledge I acquired in my trademarks class, I don’t think Rothamel is infringing on of the The Lones Group’s trademarks or trade dress.

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  • Should you Accept a Job Where you Don’t Want to Live?

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    Ruth Carter

    My classmate asked me to write about what a law student should do if they get a job offer in a state where they don’t want to move.  That’s a really hard question, and I don’t think that there is a hard and fast answer.

    The economy is not doing well and law school graduates are struggling to find jobs in general.  I’m sure a lot of people will say you should take any job you can get.  When I put this question out on Twitter, the best response was, “If you really will like the job, then the location doesn’t matter as much, at least in the short term.”  The only problem I have with this response is related to the fact that we don’t have a national bar in the United States.  When we pass the bar, we’re basically locking ourselves into one state unless there is reciprocity or we’re willing to take another bar exam.  If we weren’t locked into to a particular location, I would be more willing to support moving to a place you hate on a temporary basis.

    Ohio state welcome sign, along US Route 30, en...
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    I asked my sister, Morena Carter, for her thoughts on this topic.  She’s a law student at the University of Akron.  When she finished her masters degree in European history and museum studies, she moved across the country to accept a job at the Cleveland Art Museum in Ohio.  I was baffled by her decision.  She had never lived in that part of the country and she did not know anyone there.  When it comes to moving for one’s career she says, “I think people should only apply for jobs that they think they might like at least a little bit or that might lead them to the job they really want no matter where it is.”  She took the job because it was an incredible career opportunity of her and if nothing else, having it on her resume would help her get a more desirable job.  She stayed at that job for the 4.5 years and is still happily living in the Cleveland area.

    My Dad has always said, “Figure out where you want to live, then get a job.”  I give this advice a lot of weight because I know if I hate where I live, no job is going to make it bearable.  I need to be able to enjoy my free time.  It’s also important to know what factors you need to be happy in a city.  My experiences have taught me that I do better in cities with minimal snow and that are within 90 minutes of a major airport.

    You shouldn’t completely reject a job if it’s in an unfamiliar place, but carefully consider the opportunities and the drawbacks of both the job and the area before making a decision.  Think about what you would be willing to give up for the right career opportunity.  If you’re going to move some place completely new, it’s important to embrace it and make a strong effort to get acclimated and meet new people.  It’s hard for people who aren’t self-starters to do this.  My sister and I agree that it takes a good 6 months to a year for a place to start to feel like home.

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  • SALK Day 29 – Jane Ross

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    Ruth Carter

    Jane Ross is one of my favorite lawyers in Phoenix.  I admire her commitment to being herself and not conforming to the traditional lawyer mold.  After law school, she lasted exactly one week at a large law firm.  She quit on a Friday and by the following Monday, she had started her own firm.  She’s been in business for nearly eight years, and she’s never had a lack of work.

    Jane gave up a lot when she left big law firm life.  She gave up the security of a steady job with benefits, bonuses, and people whose jobs it is to make coffee and photocopies, answer phones, and do research, for the freedom to select her own clientele and decide her own schedule.  She can work in her pajamas at home if she wants with her dog laying at her feet.  She never has to feel guilty or worry about her reputation if she takes the afternoon off to be with her daughter.  On the flip side, she lives in an eat-what-you-kill world where she is solely responsible for her paycheck.  In many ways it appears that she has the perfect professional life, once you get past the fear of being completely responsible for her own success.  I couldn’t imagine striking it out on my own right out of law school, but I’ve heard that it’s made a lot of people happy and that help is only a phone call away if they need it.

    Rainbow flag flapping in the wind with blue sk...
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    Jane is a special breed of lawyers – the gay lawyer.  This is different from a lawyer who happens to be gay.  The lawyer who happens to be gay is someone who is a lawyer first and their sexual orientation is one of many aspects of their personality.  These are also lawyers who might be able to pass as straight.  Conversely, a gay lawyer is someone is undeniably gay and whose work is dedicated to the LGBT community.  They often are often found in boutique law firms or are solo practitioners and advertise in the gay press.  Their passion for LGBT rights and legal issues are intertwined with their identities.  These environments give gay lawyers the freedom to be themselves and focus on LGBT legal issues.  Gay lawyers and lawyers who are gay are both known for being fabulous and active in the LGBT community.   I’ve met some wonderful LGBT lawyers through the Sexual Orientation and Gender Identity (SOGI) chapter of the local bar association.

    Sponsor A Law Kid is my endeavor to pay for my last semester of law school. Today’s sponsor is Jane Ross.  For more information about Sponsor A Law Kid or to see what days are still available for sponsorship, visit my Sponsor A Law Kid page.

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