Next, understand that what follows is just my ever-dimming memory of how things played out. Do not consider this essay as the definitive "minutes" of the lawsuit process. It is quite possible that I have factual errors in this. This is just me, Robin, sharing my own perspectives and recollections.
Yes, I think we were right to contest their trademark application. That's a step we take frequently. It’s not a lawsuit.
Yes, I think we were right to negotiate with Ipharmatica to get them to not call their product ADMENSA, or AdMensa. Part of those negotiations were asking them to use "Admensa" or some other variant of font sizes that downplayed the "mensa" part of their chosen product name. They refused. They weaseled and prevaricated and dragged out the negotiations. Meanwhile we found smoking gun evidence that they planned to draw a marketing connection between Mensa and their "smart" product. No wonder they were unwilling to negotiate to lessen the confusion between the names.
Yes, I think we were right to initiate a suit when our good-faith negotiations failed. We had strong evidence. And we knew that letting one company use our name and cachet would forever diminish our ability to stop other companies from doing the same. We did not have our eyes on some big pile of gold settlement. We never ever went into this hoping to make money. Keeping our grip on our property and hopefully recovering some of our costs for doing so were the only goals we had. Yes, I think those are reasonable goals.
Inpharmatica turned the tables on us and counter-sued, saying that AML doesn't own the name "Mensa." This was a big deal. Fortunately, we had evidence to prove that we do own it, so we did not roll over and give it up. Yes, I think we were right to defend ourselves when counter-sued.
Warning: the figures in the next two paragraphs are made up for illustrative purposes!
(but the relativity of the figures to each other is fairly accurate).
The kicker was the concept of "fame." According to our research, which was diligent, a mark is famous if 40% of the general public and 75% of a specialized subset of the public (such as professors or landscapers) recognize the mark. Our data proved that 50% of the general public and 85% of the specialized subset knew what Mensa is and stands for. Awesome— Mensa is plenty famous for our case.
My memory is starting to fade on this a bit, but as I recall, the judge seems to have looked as different case law, and somehow took the 50% figure and noted that it is less than the 75% figure necessary for fame.... and ruled that "Mensa" is not famous. Something like that; I'm neither a lawyer nor do I have a eidetic memory. Basically there was a judgmental mix up we did not anticipate, but which deflated our case significantly.
We authorized our lawyers to negotiate a settlement instead of proceeding with the trial. I think we were right to offer settlement. Our offers did not include recouping everything we'd spent up to that point let alone any "profit." We were pretty damn reasonable. However, the other side had also spent a fortune on this mess, and saw an opportunity to recoup their costs.
Inpharmatica smelled blood, and declined our settlement attempts. We had to go to trial. Could we have given up and relinquished our claim of ownership of “Mensa?” I suppose so. We chose not to. I think we were right to fight to own our name.
We won ownership. This is huge, as it will significantly strengthen our case if we are ever in this situation again.
We considered going into a full-blown appeal, with the possibility of recouping some of our costs, but by then we were all weary and unwilling to spend additional money on it. Instead, we did some wrangling with appeals and settlements and blustering (all kinda dim in my mind now) that resulted in getting the judge to vacate his ruling on the fame issue. While it would have been better to have him say “Yes, Mensa is famous,” at least we no longer have on the record a statement that Mensa is NOT famous. Yes, I think the wrangling instead of fully pursuing was wise.
We absolutely did not see a little mash-up of our name on a product not generally seen by the public and think to ourselves, “heck, let’s sue ‘em!” It was a step-by-step process, and at each stage, the AMC was informed and consulted and asked to decide how to proceed. It was never seen as frivolous, and we were never blithe about the costs.
Would I be willing to spend two million on a frivolous lawsuit? Of course not. I’m not sure I’d be willing to spend that much on a non-frivolous lawsuit, and as a result of the Inpharmatica suit, I suspect we won’t ever have to. We have established that we own the mark. We have demonstrated to would-be challengers that we are not push-overs. We get to keep the piles and piles of evidence we already paid for that can be used in our defense if we ever need it.
The whole thing took several years and was financially and emotionally draining. We won—kept ownership of our name and got Inpharmatica to not use it— but it was a pyrrhic victory. We learned much and I do not anticipate ever having such a legal nightmare again.
1 comment:
I can't agree here Robin. First, regardless of what they were trying to accomplish with the name they had a good defense with ADME, adding the suffix just gave it that intellectual, dead language, sound to it. Second, the product was marketed to high level analytical chemists primarily in the pharmaceutical field. I would be surprised if 30,000 people in the world had ever heard of the product. Where is the harm to our mark? Where is the risk management in going up against a company in an industry that is involved in patent/copyright litigation on a every day basis?
They stopped using the name when they rolled the product up in to a larger suite of products.
This is my opinion as a BT Client Partner for a large pharmaceutical company.
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