the merits, weak in your opinion?
A: Oh yeah! (laughs) I’ve had a case recently where I think we
were probably wrong on the merits. But the client wanted to pursue
this company for infringing its trademark. The lawyer on the other
side was yelling at me about we didn’t have a case, and I said you
must be confusing me with somebody who cares about the merits.
We are the giant in this case and we’ve decided we’re not going to
tolerate this, we’re not going to give up.
Q: Was that effective?
A: Yeah, it worked. They gave up. We just didn’t want this
individual using the client’s mark. They’re no threat to us, a
different world, very different services. No real likelihood of
confusion. But we just didn’t want them to use it, use their mark.
In that case it was a dilution analysis. We didn’t want a lot of
people using our mark, even if they use it in a very different field.
Q: Was that an actual dilution claim, a claim under the Lanham
[Act] dilution statute?
A: No, just a straightforward trademark infringement claim.
Q: Was that your idea or the client’s to go after this company, even
though you thought the claim was weak? Let me clarify, too, did
you tell the client you thought the claim was weak?
A: Yes, the claim was not particularly meritorious. I told the client
that. But we decided any time we’d try to enforce the mark the
other side would come back with a list of registrations or uses and
tell us it’s not as strong as we think it is. So we’re going to stop
each case. It’s expensive.
Q: Is that part of the strategy, is making it expensive for the other
guy something you think helps your client get its way?
A: Usually, plus they know my client is in court every day and will
pay to litigate. You’ve got to be willing—if it makes sense—to
spend a few tens of thousands of dollars, litigate it for a while. At
that point, the little guy will give up because he’s convinced we
have the will to go through with this. We sent some motions,
interrogatories, depo notices, make him go through some billing
cycles with his attorney and they have to give up.110
Another lawyer similarly explained: