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Law Student’s Take on the Zebra TM Dispute

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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11 Comments

  1. Tina Merritt says:

    Thank you for a well written, educated opinion on the situation. I too am sad that Daniel caved to the Lones Group. But, he took the high road and did what is best for his beautiful family and peace of mind.

    1. Ruth Carter says:

      Thanks Tina. I hope this case has a resolution that gives Daniel and his family peace. I completely respect his decision.

  2. Daniel – When I first read about your letter to The Lones Group, there was a moment of sadness. Not because I think you need the Zebra moniker, but because in principal, I associate it with you and hate to see someone take that from you. Of course, I believe it was both Todd Carpenter and Jeff Turner who really made the case for “you make the stripes,” not the other way around.

    So I hit Scribd and read the letter. By page two I had lost my little glimmer of sadness and instead felt pride and happiness. Your letter is a testament to the man you are and how you deal in business. Excellent work and awesome points. I agree with you that I wouldn’t want to drag my family through a case, but of course my blood would have boiled and I would have been ready to fight the first few days until I sat down and thought a little calmer.

    I look forward to hearing Denise’s response and hope you gain a favorable outcome (ie, no lawsuit).

    In the meantime, I think you should take the “rockstar” moniker and run with it. As far as I’m concerned, you’re more than welcome to it.

    (PS In the video the other day you talked about raising ‘LilZebra right – my friend, you just wrote a quality life lesson for her.)

  3. D’oh – I had too many screens open and wrote in the wrong comment box!

    Ruth – great post from a legal (student) perspective. Even though we as agents can’t practice the law, I do love reading about it.

    1. Ruth Carter says:

      Your note to Daniel, and all the posts to Daniel that I’ve read this week, have been really sweet. I’m so glad that there’s so much support around him and for him.

  4. David Losh says:

    You should have researched the entire case before writing this.

    1. Ruth Carter says:

      I couldn’t agree with you more – I wish I had all the information around this case, including all the applicable case law. These are the type of legal issues I’m passionate about. One of my lawyer-friends disagrees with my opinion that Daniel’s blog isn’t in commerce, and he may be right. He’s been practicing law for a long time. I hope there isn’t case law supporting everything he told me. I think that there are a lot of issues coming down the pike in regards to how the law applies to the internet and it’s imperative that they be decided correctly based on accurate information presented by lawyers who are thoroughly versed in the law and the issues, and decided by judges who fully understand the facts of the case, the law, and the potential slippery slopes that could be created by the wrong outcome. I’m not saying that this is not what is occurring here. I’m saying that it’s important that these cases regarding emerging technology be decided properly or the results could disastrous and take decades to fix.

  5. Stark says:

    I am told by my intellectual property geeks that the case is substantially weakened by the lack of any attempt to trademark. An attempt to do so would have been met with a qualifying and clarifying imperative. One can not just claim “clouds” as business trade dress. Or zebras. Or kittens. Or plates of spaghetti. To trademark a giraffe, one must actually demonstrate some creativity by creating something that God didn’t – consider the character of Geoffry from Toys R Us. Or Chuck E Cheese the mouse. In other words, plastering pictures of donkeys on your web site and publishing the Donkey Blog, does not make you the only person in your class who is an Ass.

    1. Ruth Carter says:

      Exactly!! That’s one of the main reasons why I thought Dan had a case worth fighting.

  6. I’m not going to make any comments about the legal aspects of this ‘matter’ as I spent too many years in a law firm (as a legal secretary and paralegal) to care to opine, especially when it’s none of my business. I merely wanted to tell Stark I loved his Ass comparison.

    1. Ruth Carter says:

      Agreed! I thought it was brilliant.