There Is No Cat

Adventures in The Trademark Zone

Well, I got a very interesting e-mail today. Some time ago, I posted something to There Is No Cat about how I convinced David Weinberger, one of the authors of The Cluetrain Manifesto, to alter the design on JOHO The Blog to accomodate colorblind readers such as myself who had trouble distinguishing between his regular text and his links. Given that David was one of the Cluetrain guys, I thought it would be cute to point out how receptive he was to my suggestions by saying that it didn’t take a clue-by-four to convince him.

Did you know that Clue-by-Four™ is a trademarked term?

I didn’t, until I got a cease and desist e-mail today from Joel McClung, the President of Intrax, Inc., the owner of said trademark. Mr. McClung asked me to alter my post to include his trademark notice or to stop using the phrase or else he would sic his lawyers on me.

I told Mr. McClung to pound salt. (Well, I was more polite than that, but I made it clear I had no intention of complying with his request.)

But before I did that, I took a trip through the vagaries of trademark law.

I’m not sure when the phrase "clue-by-four" first came in to common use. It’s clear from a search of Usenet through Google Groups that it was heavily used there, particularly in the newsgroups where anti-spammers congregated (such as news.admin.net-abuse.email), by 1997 (Google Groups claims more than 12,500 examples of the phrase). Numerous posts were made with subject lines that called for the application of clue-by-fours to one or another offending spammer. I expect that’s probably where I picked up the phrase; that was back when I tried to actively track down spammers rather than just deleting or filtering out their efforts as I do now, and I read those groups regularly at the time. The earliest citation on Usenet that I find is this one from 1992 describing widespread use at the University of Washington of the phrase. Mr. McClung’s trademark is dated in 1999, so the common use of the phrase certainly predates his application. I don’t know, maybe I picked up the phrase from Simon Travaglia’s hilarious BOFH series. This other BOFH page, in fact, sells Clue-by-Fours™, and claims it as their trademark! (I don’t think the page is associated with Simon Travaglia, though, and they don’t really sell items.) The phrase’s first appearance that I could find in The Jargon File, which tracks common use of terms among the computer literate, was in version 4.1.0, published on 12 March 1999, months before McClung’s trademark application on 31 August 1999, so surely it was in common use before he trademarked it.

Interestingly, if you search for "Joel McClung" on Usenet through Google Groups, it appears that he has been posting for a long time, going back as far as 1984, which was even before I first participated in Usenet in 1987. The guy is clearly aware of netnews, so I wouldn’t be surprised if that’s where he discovered the phrase as well.

Mr. McClung’s e-mail claimed that my use of the phrase "clue-by-four" would result in dilution of his trademark, which he is planning to use for a device that he is trying to bring to market. The Chilling Effects Clearinghouse has a very informative page about trademark law that covers the subject of trademark dilution. They say that "The Federal Trademark Dilution Act of 1995 (FTDA, 15 U.S.C. 1125) prohibits the commercial use of a famous mark if such use causes dilution of the distinctive quality of the mark." (Emphasis added.)

There Is No Cat has no commercial purpose. It’s just a personal weblog. Trademark dilution is aimed at commercial use of trademarks. Therefore, it is not possible for something I posted here, particularly in the manner I posted as described above, to be actionable trademark dilution. Strike one. The fact that Mr. McClung’s product has not even come to market yet argues against its consideration as a "famous" trademark. Kodak is a famous trademark. NBC is a famous trademark. Clue-by-Four is not a famous trademark. That’s strike two.

The Chilling Effects page also talks about the distinction between primary meaning and secondary meaning of words and phrases. Words that are used in everyday conversation in their primary meaning can be used as trademarks in a secondary meaning. The example they give is "apple". If I eat an apple and then write about it here, I don’t have to note that the word is a trademark that applies to computers and music. Computers and music are secondary meanings for the term "apple". In the world I live in, the phrase "clue-by-four" has a primary meaning as a metaphor for enlightenment. Use of the phrase to describe a novelty toy (the description used in the trademark records) would appear to me to be a secondary meaning. The trademark holder cannot prevent me from using the phrase in its primary meaning. Strike three.

Incidentally, while I was at the Chilling Effects site, I submitted a brief version of this tale. I don’t know if it meets their threshold for inclusion in their database, or if it would require that I had received a letter or e-mail from an actual lawyer, but that’s their decision.

When I used to work as a production editor for computer software and hardware manuals many years ago, I dealt with trademarks all the time. We expended great effort to make sure that the first occurrence of each given trademark was duly noted. As I recall from that time, if you have a trademark, you don’t want it to be used as a noun. So, for example, we would never refer simply to StarLAN®; we always referred to it as StarLAN® Network, where the trademark modified the noun rather than serving as the noun. That’s how we figured it, anyway. Similarly, Kleenex Corp. always refers to its namesake product as Kleenex® brand tissues, and even takes out advertisements in publications read by journalists to remind them to always use Kleenex as a descriptive term for tissues in their writing rather than as a noun. If Mr. McClung wishes to protect his trademark, he would be well served to refer to his product as a Clue-by-Four™ brand toy novelty or some such locution. He would be better served to consider whether his actions in protecting his trademark might not diminish the goodwill vested in his company.

IMHO, Mr. Joel McClung of Intrax, Inc., would benefit greatly from the vigorous application to his self of the metaphor from which he apparently lifted his trademark for a novelty toy. I hope that some day, he gains enough enlightenment to realize the tremendous irony in threatening people who use the phrase "clue-by-four" in its primary meaning to describe this metaphor of enlightenment.

I’ll let you all know if I ever get a followup letter from a lawyer. I’ll also let Chilling Effects know.

Posted at 10:43 PM