Strahl v. Oh-Willeke [1]

On his blog "Wash Park Prophet," Andrew Oh-Willeke wrote a post [2] entitled "Mr. Trademark Abuse" about Leo Stoller, an entrepreneur who has litigated a number of trademark infringement claims asserting rights in the word "stealth." (According to the New York Times [3], Mr. Stoller apparently also has registered trademarks for the words "bootlegger," "hoax," and "chutzpah.")

A few days later, Oh-Willeke received an email [4] from Joe Strahl, Vice President of Mr. Trademark Inc., the purported owner of the registered trademark "Mr. Trademark ®." The email asserted trademark rights in the words "Mr. Trademark" and complained that the blog post about Mr. Stoller wrongly created the impression that Stoller was associated with Mr. Trademark Inc. The email also appeared to raise a libel claim, arguing that the company's "reputation as a trademark search company and agent is being harmed by the defamatory and libelous post." Strahl threatened legal action unless all posts using the words "Mr. Trademark" were taken down.

Oh-Willeke responded by adding a disclaimer to the original post, which says:

Notice: The title of this post "Mr. Trademark Abuse", should in no way be confused with the firm "Mr. Trademark® Inc." which has no relation to Mr. Stoller, according to its representative Joe Strahl VP. Of course, if you had a brain, you would have realized that simply from the context of the post, but I'm putting it here for anyone too thick headed to understand that point on July 16, 2007 in response to a cease and desist e-mail I received today when I opened my work e-mail this morning.

Oh-Willeke also wrote Strahl an email denying that he made any false statements of fact and critiquing Strahl's trademark claim. It is worth reproducing here in full:

I have received your e-mail and have posted a disclaimer in the post in an abundance of caution. Nevertheless, I believe that you[r] cease and desist e-mail is off base. I will not remove the post or change the title as you have requested.

1. I am not trying to sell trademark services in this post.
2. I have made no false statements of fact.
3. I clearly identify the factual basis of my statements.
4. You, like Mr. Stoller, seem to fail to appreciate that a registered trademark is not a monopoly on use of certain words, it is merely a ban on marketing goods or services in a confusing fashion.
5. From context, it is clear that "Mr. Trademark Abuse," the title of my post,is something very different, indeed the opposite of, "Mr. Trademark," which you have registered.
6. Also, from context, it is clear that I am not using the words in a manner intended to have secondary meaning.
7. I seriously doubt that your registered trademark would withstand court scrutiny as it is merely descriptive of the services you provide. Descriptive trademarks are inherently weak. In the same way, it is impossible to get a valid trademark on “Liquor Store” or “Dry Cleaner” for a liquor store or dry cleaner respectively. Your own trademark verge[s] on frivolous itself.

Please refrain from taking further unreasonable action.

This precipitated an email exchange between Oh-Willeke and Strahl, in which Strahl continued to assert his trademark rights and demanded that the posting (or at least the title) be taken down. Oh-Willeke pointed out, among other things, that that the registered mark "Mr. Trademark" did not consist of the words "Mr. Trademark" alone, but rather the words in connection with a drawing of a little man, and that the registration document expressly stated that "no claim is made to the exclusive right to use 'trademark' apart from the mark as shown."

No resolution appears to have been reached between Strahl and Oh-Willeke.

Update:

As of 10/08/07, Oh-Willeke's blog had not included any updates regarding the situation.