February 23, 2009 4:22PM

PTO Error/​Trademark Abuse Update

Two weeks ago, I published a TechKnowledge article telling the story of how a mistake at the U.S. Patent and Trademark Office and some sharp lawyering had put a small business on the ropes. The Nordstrom retail chain appeared poised to use the PTO’s processes to grind under an organic yoga and lifestyle clothing business called Beckons so it could take their trademark.

Not so fast, said the blogosphere. Several blogs picked up the story, as did the trademark bar. Hearing from disapproving customers, Nordstrom made sounds about a compromise.

That was well‐​executed PR, and it tamped down the story, but two weeks later there is no compromise. Nordstrom’s motion to cancel two small businesswomen’s trademark still stands. The women’s legal bills are still stacking up, and Nordstrom’s apparent gambit to take away their trademark is still playing out. It’s a case of pure and simple abuse which I will continue to follow and report on here.

Earlier this year, in a parallel case, Monster Cable Products relented from its wrongful trademark‐​based attack on a small business called Monster Mini Golf (dissimilar products = no likelihood of consumer confusion from using the same name). The head of the company realized that his attorneys had driven him into a legal and public relations dead‐​end, and he agreed to dismiss his company’s actions and reimburse Monster Mini Golf’s legal bills.

In today’s increasingly watchful and empowered, Internet‐​driven marketplace, it’s bad for business to use legal and regulatory processes unfairly. We’ll see if that lesson takes root in this case.