Watcha Goin' Do When They Come For You?

We have received phone calls and emails from other companies currently in the cross hairs of Intel Corporation's belligerent legal army. Most people, having glimpsed the crushing might of their battle assets, are bewildered and frightened.

So we decided to offer some advice here on the blog. What to do if you receive a cease and desist order from Intel Corporation or one of its mercenary external counselors regarding trademark infringement -- and we refer specifically to the use of 'intel' in your company name or Internet domain.

But first the disclaimer: THE AUTHOR OF THIS BLOG IS NOT A LAWYER, AND IN NO WAY INTENDS TO CONSTRUE THE FOLLOWING OPINIONS AS LEGAL ADVICE. YOU ACCEPT TO READ AND FOLLOW, OR EVEN JUST TO READ, THE FOLLOWING COMMENTARY AT YOUR OWN RISK. PLEASE CONTACT AN ATTORNEY IF YOU ARE UNDER THREAT FOR TRADEMARK INFRINGEMENT CLAIMS.

Rule #1.
Ask yourself: Am I violating their intellectual property?

If you are, stop. It's wrong -- even if you are doing so unintentionally. Strong IP protection is highly correlated with an economy's tendency to innovate and invest in research and development. Why spend time, money, and your creativity to develop something if anyone can bootleg your creation? We strongly support trademark protection.

Having said that, there are various issues to consider.

Firstly, there is the fair-use doctrine, which seeks to prevent the private ownership of work that rightfully belongs in the public domain. The use of the word 'intel' in its generic English-language sense of shorthand for "intelligence" as the act of gathering and analyzing information, which is the point of contention in our case, is an example of the fair use of a word in the public domain. Intel Corporation, no matter how famous their mark, no matter how great its estimated brand value, no matter how weighty its investment to grow that worth, cannot withdraw a word from the public domain. So if you are in the intelligence business, and we know of a number of examples of companies that are and which employ 'intel' in their domain or mark, you would be doing yourself and the English language a disservice by acceding to legal pressure to surrender a public-domain word to a private company.

A good example of this doctrine is the fair use of the word 'apple.' The Beatles' Apple Corps. and California's Apple Computers may sue each other over the use of the word Apple until their lawyers all drive luxury sedans and retire to a tropical island. Neither company produces tree fruit. Both have produced or sold music and electronics in the past. And, in fact, there were numerous lawsuits between these companies in the period between 1978 and 2006. Almost three decades after the first complaint, they reached a settlement in 2007. Bully for them. But anyone can still produce apple pies and name their company [Generic Name Here] Delicious Apple Pies Inc.

Secondly, you must consider the likelihood of confusion. For trade or service mark purposes, here are the acid tests grouped under the umbrella test of likelihood of confusion: (1) the strength of the mark; (2) similarity of the marks; (3) proximity of the goods/services sold; (4) similarity in the marketing channels used; (5) the type of goods/services and the degree of care likely to be exercised by purchasers; (6) evidence of actual confusion; (7) defendant's intent in selecting its mark; and (8) likelihood of expansion into other markets.

If -- AND ONLY IF -- you believe that your use of 'intel' passes these tests, read on.

Rule #2.
Do not seek to contact Intel Corporation or their legal representation directly.

The first instinct of most people that receive a saber-rattling C&D notice from one of the world's largest companies is: "This is insane! Surely a mistake! This would ruin me; I'll explain the situation and they'll be reasonable."

They won't. No matter how reasonable the people you ultimately speak with are in their civilian lives, as Intel Corporation legal warriors, they have had to adopt an unquestioning faith in the following tenet: Intel is a portmanteau for integrated electronics; it does not and could not refer to anything else anywhere at any time in history; permitting a single company to employ it would invite utter ruin. In fact, their battle motto is: "Death By 1,000 Slices."

They will not be reasonable. They will not compromise. They will not allow you any room to maneuver.

Not only will you waste your time and become so frustrated with the monolithic philosophy you encounter that you want to rip out your own hair in clumps, you will weaken your case.

Lawyer up.

If you already have a trademark attorney or if you can afford to hire one, do not waste any time. Begin to plan your defense strategy. If you cannot afford one, don't despair. Many of the nation's finest attorneys would welcome a chance to defeat a nefarious corporate bully such as Intel Corporation on a pro bono basis.

Our legal team is proof of this statement. Our attorneys already enjoy national fame in their fields. Quashing another injustice by Intel Corporation is just their daily bread.

[NOTE THAT NONE OF THE OPINIONS EXPRESSED IN THIS BLOG REFLECT THEIR LEGAL COUNSEL, NOR HAVE THEY REVIEWED OR IN ANY WAY AUTHORIZED ANY OF THE OPINIONS EXPRESSED HERE.]

People will tell you that trademark lawyers almost never take on cases pro bono. Attorneys of all stripes told us the same for months. Major public interest groups, including Public Citizen and the ACLU, rebuffed our petitions for legal support. But keep at it. This is an important issue that could eventually receive Supreme Court scrutiny. You'll find suitable representation. And if not, consider a pro se defense. You'll still be better off than if you just fold under pressure.

Rule #3.
Their bark is worse than their bite.

"Intel has instructed this firm to seek all available remedies, including injunctive relief, damages, and reimbursement for attorneys' fees and costs." Sound familiar? Don't be intimidated. It is this author's reasoned and researched opinion that no federal judge in the United States would award Intel Corporation either damages or legal fees even if you do eventually receive an unfavorable injunctive ruling. Intel Corporation may win an enjoinder or restraining order, but they won't get more than that, presuming, of course, that you are either in the gray area of the law or simply operating without malice.

If you are intentionally or gratuitously infringing upon their trademark, either out of malice or for personal gain, then that is another question. However, if you are, you shouldn't be reading this posting, anyway. Refer back to rule #1.