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March 7th, 2011:

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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