Intel Corporation Asks Court To Deny

Intel Corporation has asked the Honorable Judge Charles Breyer to deny our motion to dismiss. The hearing on this motion is scheduled for July 2.

The Opposition To Defendant's Motion To Dismiss does proceed on the basis we predicted. Specifically, Intel Corporation has highlighted the improbable and almost borderline claim that our customers, actual or prospective, may overlap with their customers because Intel Corporation publishes newsletters:

• The parties each utilize INTEL-formative marks (e.g. INTEL v. LATIN INTEL) and Intel uses a large family of INTEL-formative marks;

(INTEL, a coined portmanteau for integrated electronics; LatinIntel, a generic English-language descriptor for Latin American intelligence gathering)

• To offer related (if not competitive) products and services (e.g., newsletters that address business and economic developments in Latin America, among other regions);

(Yes, this is where Intel Corporation asserts that among its many activities in Latin America, it publishes newsletters. Nobody, and certainly not a federal court judge, will for a second believe that the California-based technology manufacturer has any business as a "SPECIALIZED INFORMATION PUBLISHER.")

• To a specifically identified and significantly overlapping customer base (e.g., executives of the majority of U.S. Fortune 500 companies); and

(Yes, the type of customer base that the Mexico Watch Intelligence Service targeted was indeed top executives of global companies, executives with significant responsibilities in Mexico. From the Specialized Information Publishers Association: "The market consists of companies or individuals within companies who need specialized information about their industries that may not be available or is extremely difficult to find without the efforts of a specialized-information publisher and are willing to pay high prices for that information.")

• Such conduct is likely to cause confusion amongst Defendant’s actual and prospective customers.

(The Plaintiff's "likelihood of confusion" argument is, in fact, so weak that they are now focusing on a dilution argument. Read on.)

Intel has pled that:

• An astounding 86% of consumers who associate the term 'intel' with any word, definition or mark (not just a trademark) associate the term with Intel Corporation; and

(What is astounding about this sentence? How about the choice of the word astounding? This survey is surprising because it suggests 14% of people who think of intel as a word don't even recognize Intel Corp.?? We do not know, because this survey, its methodology, its authority, and its statistical confidence, have not been divulged. We conducted one unscientific online survey seeking one or more definitions for "intel" and found 33% thought it meant one thing, Intel Corporation; 33% thought it meant two things, shorthand for intelligence and Intel Corporation; 33% thought it meant more than two things, but at least the previous pair of definitions.)

• Intel will make the requisite showing of the likelihood of the loss of such distinctiveness “through the submission of survey evidence,” which is the standard method to establish an actionable likelihood of dilution.

(Would, not will. But only if Judge Charles Breyer lets Intel Corporation's flagitious complaint survive.)

Time To Cap The Well

We've endured the Intel Corporation's ruthless, disingenuous, and irresponsible attacks since July 2007, so their defeat will bring us some personal, emotional satisfaction. BUT THAT'S NOT THE POINT.

Because at the end of the day, this is a battle in the interest of reason and public good, not a quixotic matter for individual celebration. Quite the opposite.

The overriding goal here is (1) to establish some limits on the ability of private companies to hijack federal trademark law as they maneuver to strip the public domain of our words, symbols, images, and otherwise unravel the threads of our common fabric; and (2) to serve notice on corporate abusers that they may not usurp the legal system at will in order to undermine the spirit of the law and further narrow private agendas, especially at the expense of other people's livelihoods.

Both of these issues represent very real risks, and must be taken seriously, confronted with eternal, patient vigilance. At their dark heart, these issues are literally evil.

It's hard as hell to stand up to these egregious abuses. It is, in fact, terribly difficult to fathom the sacrifices one must endure until one has lived it. What a sickening, crushing injustice it would be if Intel Corporation were allowed to continue soiling our waters with their filth and for their profit.

So on July 2, everyone please give a little silent cheer at the sidelines for Ron Coleman and Colby Springer, the lawyers that have selflessly taken on one of the world's largest private legal forces history has ever known. That day, they will be arguing our case that Intel Corporation's legal complaint should be dismissed once and for all. Ron and Colby are doing this pro bono, and at the end of the day, and hopefully at the end of that day, when victory is ultimately achieved, they will remain the real heroes of this story. Let our thoughts give them wings.

MOTION TO DISMISS HEARING IMMINENT

Fellow Abuse Watchers:

***THE MOST IMPORTANT DATE IN THREE YEARS OF PROCEEDINGS IS SET FOR JULY 2. ***

When it comes to legal proceedings with Intel Corporation, legal dates shift around so much that life-planning starts to feel like whacking moles. Except you never seem to whack anything, no matter how many quarters you empty into the slot.

Having said that, some new dates were finally set last week: (Spoiler alert, July 2 is the doozy.)

This Friday, June 11, Intel Corporation will file its opposition brief. It will oppose our Motion to Dismiss, possibly leading with its newest implausibly ludicrous claim that our use of the English word "intel" is hurting its newsletter publishing business.

We have one week to respond with a reply brief. On Friday, June 18, our legal team will reaffirm our motion to dismiss and refute any new points drummed up in the opposition brief -- undoubtedly bursting at the seams with every conceivable tangent that opposing counsel may dredge up during their billable hours orgies.

MOST IMPORTANTLY: The Motion to Dismiss Hearing, formerly scheduled for Friday, June 25, was moved to to Friday, July 2.

This is the hearing in which a Federal Judge will once and for all reject Intel Corporation's pernicious, abusive legal campaign to break the back our small company in a gross display of corporate greed.

Unless, of course, the Federal Judge lets some part of Intel Corporation's legal complaint survive.

***At this point, it looks highly likely that Intel Corporation will suffer a long-overdue, humiliating defeat.***

And sure, we've endured the company's ruthless, disingenuous, and irresponsible attacks since July 2007, so their defeat will bring us some personal, emotional satisfaction. BUT THAT'S NOT THE POINT.

Because at the end of the day, this is a battle in the interest of reason and public good, not a quixotic matter for individual celebration. Quite the opposite.

The overriding goal here is (1) to establish some limits on the ability of private companies to hijack federal trademark law as they maneuver to strip the public domain of our words, symbols, images, and otherwise unravel the threads of our common fabric; and (2) to serve notice on corporate abusers that they may not usurp the legal system at will in order to undermine the spirit of the law and further narrow, private agendas, especially at the expense of other people's livelihoods.

Both of these issues represent very real risks, and must be taken seriously, confronted with eternal, patient vigilance. At their dark heart, these issues are literally evil.

It's hard as hell to stand up to these egregious abuses. It is, in fact, terribly difficult to fathom the sacrifices one must endure until one has lived it. What a sickening, crushing injustice it would be if Intel Corporation were allowed to continue soiling our waters with their filth and for their profit.

So on July 2, everyone please give a little silent cheer at the sidelines for Ron Coleman and Colby Springer, the lawyers that have selflessly taken on one of the world's largest private legal forces history has ever known. That day, they will be arguing our case that Intel Corporation's legal complaint should be dismissed once and for all. Ron and Colby are doing this pro bono, and at the end of the day, and hopefully at the end of that day, when victory is ultimately achieved, they will remain the real heroes of this story. Let our thoughts give them wings.

A Shred Of Intel... Corp.

The dynamic duo of Ronald Coleman and Colby Springer have produced a powerful, compelling legal argument for our second motion to dismiss Intel Corporation's now-infamous trademark and cybersquatting complaints against us.

http://www.likelihoodofconfusion.com/?p=5760

Flying Lawyers UPDATED

In the previous post, we examined this claim from the Plaintiff:

"Intel made numerous attempts to resolve the dispute amicably, including its offer to fly and meet with Defendant’s counsel in person to try to resolve the dispute, which Defendant rejected. Defendant’s infringing use of the AMERICAS NEWS INTEL PUBLISHING trade name and LATIN INTEL and LATIN INTEL TRADE CENTER trademarks persists, leaving Intel no choice but to pursue its claims."

What a crock. On the contrary, we initially tried to work out a compromise, and only out of goodwill and pity toward these belligerent jerks that had ignorantly selected an English-language word as their trademark and realized in hindsight the folly of their choice.

In July 2007, Intel Corporation started harassing us. In June 2008, we said LEAVE US ALONE.

When they refused to leave us alone, we set forth a very clear condition: Send us a clear good-faith offer in writing, and we will resume talks. Until then, confine your pestering to the snack room near the elevator. Read an excerpt:

"Thank you for your letter of June 23, 2008. I understand that you wish to resume negotiations by telephone for the sake of efficiency and you have expressed concern that we are declining this invitation. To address that concern, allow me to explain.

Intel has failed to engage in these negotiations with an earnest desire to reach a settlement, but rather is seeking to compel my client’s capitulation through a prolonged campaign of attrition. We have provided detailed estimates of the business costs and risks implied in changing the trade and domain names. These efforts have been met with summary dismissals.

After nearly one year of glacial progress, we view this process as harassment rather than a good-faith effort to reach an amicable settlement, and we fail to see how the goals of efficiency and expediency will be served by yet another phone call.

...

My client will not accept an unreasonable amount to settle this matter, and is not disposed to squander additional time and money on purposeless and desultory discussions. We are perfectly willing to resume and conclude this settlement process, which is why we have requested that Intel submit a good-faith offer in writing. Until we have a clear indication that your client intends to collaborate with us on reaching a mutually agreeable settlement, there is nothing further to discuss."

Of course, we have since learned that Intel Corporation and its legal toughs routinely and methodically use C&D harassment to force small businesses into capitulation.

This is not irrational behavior. Rather than painstakingly sift through the universe of people and companies that have any kind of overlap with what Intel Corporation believes to be its intellectual domain (which includes golf balls, newsletters, computer chips, refrigerator magnets and more), the company's lawyers simply blast away with a shotgun.

There will be some collateral killings of innocents, but that is an acceptable risk in the business of trademark war.

But war is not risk-free.

Sooner or later, one of these small business had to fight back. And then the harm served by the scattergun approach would accrue against Intel Corporation. And so one has, and so the injuriousness will be visited upon the dealer.

There is one very large and important difference between geopolitical and trademark war. At the end of the day, Intel Corporation is bound by the sanctity of the courts. The very system that its legal department has learned to exploit and abuse also serves as the full stop for its rogue behavior.

More Lies From The Plaintiff

Intel Corporation has filed its amended complaint in the federal courts after the Honorable Charles R. Breyer threw out the original frivolous complaints on trademark infringement.

This is how he explained his decision to the hapless plaintiffs:

"It really is lacking in enough specificity which would demonstrate that there was confusion or that you're even addressing the same markets. I mean, my understanding is that there may be no customer overlap at all in connection with this."

So they amended. And the amended complaint is stuffed with even more frivolity than the first, something likely to annoy Judge Breyer.

What do we mean? For example, the company tries to assert there is customer overlap through the following:

"Intel offers newsletters focusing on technology and business forecasting under its INTEL family of trademarks ... The intended audience for such publications includes individuals in the U.S. who are interested in technological business developments, trends and forecasts, both domestic and abroad."

Really? A newsletter publisher? The company is really going to assert that it competes with Mexico Watch Intelligence Service newsletters? I mean, that's just insulting.

Not to the judge -- though come to think of it, the Hon. Charles Breyer may feel this assertion insults his intelligence -- but rather it is an insult to our newsletters! Mexico Watch would never permit the shoddy handling of facts that Intel Corporation does. We've never seen their newsletters, nor do we know how much they cost to subscribe to, but to this budding Intel Corporation newsletter division we say: Don't quit your day job.

Speaking of facts, let's take a look at this amended complaint.

Yikes! Did you read all of that? Unless you are a trained lawyer, let's hope not. You would require advanced tedium therapy for years to come.

In this amended complaint, the plaintiff alleges:

"Intel made numerous attempts to resolve the dispute amicably, including its offer to fly and meet with Defendant’s counsel in person to try to resolve the dispute, which Defendant rejected."

You probably didn't know lawyers could fly. But this one can. Prior to joining Howrey, James Cady used to be the global trademark enforcer for Red Bull. So he's got wings.

But even though we knew this at the time, little notion had we that Cady had offered to fly out to meet with us. That's because he never said that. He said he would be in Washington DC and could swing by our lawyer's office for some face time.

So friendly! "I brought you a cigar and an energy drink. Want me to barnstorm you around the Washington Monument?"

What actually happened was the following: Howrey, which had initially started sending us Cease and Desist threats in July 2007, conducted a bizarre, stop-and-go, disingenuous harassment campaign for month after month. We've documented and posted the haphazard communications and inflexible positions that this campaign involved. After more than a year of their erratic badgering, during which time we were passed around among different Howrey lawyers, we said: "Enough."

In fact, we explicitly informed them that their repetitive, fickle, and bad faith settlement offers were not welcome. We also expressly accused Howrey of conducting a war of attrition, seeking to grind our resources down with chicanery and bluff. Intel Corporation and Howrey, at a jointly chaired seminar on trademark infringement, OPENLY declared that waiting out small companies while they collapse into bankruptcy IS PART OF THEIR LEGAL STRATEGY!!!

To paraphrase, we said: "Your communications are unhelpful and burdensome. If you have anything further to discuss, put a clear offer in writing. Until then, do not contact us."

Easy enough instructions to follow, right?

Immediately, the phone range. Crinkling aluminum cans of energy drink chirped in the background. It was the Howrey guy. Cady wanted to talk.

We firmly reiterated our instructions. Clear offer in writing first. Resumption of talks second. A very lucid directive from us. Easy. It was then that the Calfornia-based lawyer suggested a personal meeting while he was in Washington DC. Not so easy? Not when you're hopped up on energy drinks. But he wasn't, right? So what gives?

If we had any reason to regard Howrey's tactics as underhanded, and, quite frankly, we do, we would conjecture that this offer was simply another way to log billable hours to meet a quota.

But that's ancient history. What's new in this case is that Intel Corporation and the Harvey Siskind law firm that represents the California-based technology maker in this case are misconstruing the facts in a legal complaint before a federal judge. Some would say that's naughty.

The fact is that Intel Corporation, via its Howrey counsel, made numerous demands that we accept their terms to cease and desist. The terms they presented us were insulting, unrealistic, and absurd, and we told them exactly that using exactly those words at the time.

When we asked them to discontinue their harassment, they did not. They stepped it up. Now they seek to paint us as intransigent? Unfortunately for them, we have the paper trail.

Props To Our Lawyers

It's time to heap praise upon the legal team that quashed Intel Corp.'s initial efforts in the Northern California Federal Court District to sue our tiny company on groundless, trumped up charges.

It is highly likely that Intel Corp. representatives at Harvey Siskind amend the legal complaint and throw it at us again. They have payments to make on their luxury cars, after all. Billable hours are billable hours. And at their prices, so much the more.

But in the meantime, a huge hurrah for the stellar, noble, pro bono work by our team. Both of the brilliant lawyers described in the bios below already enjoy enough national fame for their work in their fields. They hardly need to worry about defending a small company against the massive legal resources of the Intel Corporation legal department. Why do they? Simply put, they are two fine men with deep convictions and just sensibilities.

A grand, heartfelt thank you to both. It is a pleasure to work with them for their senses of humor, stunning insights, and amazing grasp of strategy.

Lead Counsel
Ron Coleman
Goetz Fitzpatrick LLP, New York & New Jersey
Author of one of the top American legal blogs, http://www.likelihoodofconfusion.com

Ron Coleman is a commercial litigator and business attorney whose work focuses on copyright and trademark infringement claims involving the Internet--including advising clients how to avoid them. He is an expert on First Amendment and intellectual property rights, especially pertaining to the Internet. Coleman, general counsel for the Media Bloggers Association, has published numerous articles about intellectual property rights and the Internet; in fact, the first piece published on this topic by the American Bar Association Journal was written by Coleman in 1995.

His scholarship may be viewed here: http://lawyers.law.cornell.edu/lawyer/ronald-d-coleman-1482337#publications


Local Counsel
Colby Springer
Carr & Ferrell, Palo Alto

Colby Springer has represented more companies than we can mention here, but a brief sample includes Sony Computer Entertainment; network security provider SonicWALL, Inc.; Ruckus Wireless, a leading supplier of wireless solutions; ZONARE Medical Systems, Inc. (makers of the world's first convertible ultrasound system); and engineering and research development firm Pax Scientific.

He is barred, of course, to practice in California State(a requirement for local counsel in the Northern California District), but he has also been admitted to numerous other federal district courts, the US Court of International Trade, the Federal Appeals Circuit, and the US Supreme Court.

Mr. Spring is a partner in the Intellectual Property and Litigation Practice Groups of Carr & Ferrell. Mr. Springer has experience in all fields of intellectual property law, advising clientele at every level of business development—from start ups to public companies. Mr. Springer counsels clients on acquisition and protection of intellectual property portfolios, specifically with regard to patents and copyrights. Mr. Springer has also represented a number of companies in patent, trade secret, copyright and antitrust suits. Additionally, Mr. Springer has provided counsel to various clients on interference and re-examination proceedings pending before the United States Patent Office.

Mr. Springer has published numerous articles on intellectual property law including the Section 271 Safeharbor and the Experimental Use Exception; trademark dilution; the intersection of copyright and trademark law as it pertains to false designations of origin; the interplay of the antitrust and intellectual property laws; collective publishing rights; the public domain; domain name litigation and UDRP cybersquatting proceedings. Mr. Springer is also a contributing author to the “Matthew Bender Practice Guide” for California Unfair Competition and Business Torts. In addition, Mr. Springer has given presentations on the Digital Millennium Copyright Act and the Patent Cooperation Treaty.

Judge Tosses Out Frivolous Intel Corp. Suit!!!

On April 2, our counsel argued our Motion To Dismiss Against Intel Corporation's now infamous frivolous lawsuit against Americas News Intel Publishing Corp.

This from our attorney's mobile device as he left the courthouse:

"Causes of action 1-7 dismissed with leave to amend. Claim 8 was denied but only because we didn't address it. 30 days to file an amended pleading. They also are going to request a different mediator because the current one has no real trademark law experience. I told them that was fine. Boom goes the dynamite."

In short, WE WIN!

At least this round. Intel Corporation's attorneys at Harvey Siskind had asked the Honorable Judge Charles Breyer to grant a leave to amend if our motion to dismiss was successful. Since Breyer did toss out essentially the entire case (Action 8 is an almost laughable complaint that we were "cybersquatting" an Intel domain property), plaintiff will have the option of amending and refiling.

Intel Corp. and its lawyers probably will. It's Intel Corp. They've got the deepest pockets imaginable for frivolous litigation. They can drag this out, so they probably will.

BUT THIS VICTORY IS HUGE!

It essentially nullifies the entire grounds for Intel Corp.'s whining legal complaints. We told Intel Corp. they were baseless. Now a federal district judge has, too.

So stay tuned. One way or the other, we'll know what happens next within 30 days.

UPDATE COMING!!!

On April 2, our lawyers will argue before the honorable Judge Charles Breyer our Motion to Dismiss. We need to post some update. For now, read the next post for some amusing harassment, crafted at considerable expense to Intel Corporation by its counselors at Harvey Siskind.

Pester, Pester, Let It Fester

In the run-up to the April 2 hearing at the California Northern District of the Federal Courts, Intel Corporation attorneys at Harvey-Siskind have a few needling questions they'd like answered. Just a few. Like some 150. How many billable hours do you think it took to dream up this laundry list of annoyances?

First_Set_of_Interrogatories
First_Set_of_Requests_for_Admission
First_Set_of_Requests_for_Production

Defendant Briefs

On Friday, Feb. 19, the court received final briefs from the defendant. Following are the relevant documents:

BRIEF

Declaration Jeffrey Wright

Declaration Ronald Coleman

Exhibit A

Exhibit B

Damning Screen Shots (Part III)

We only heard one comment on the screen shots posted last week. A supporter (and donor) asked: "I'm confused about the screenshot of the blonde girl ... isn't that just a page that shows the domain is no longer owned by you?"

Well, yes and no. The domain in question, latinintel-tc.com, was and is registered to Americas News Intel Publishing LLC. However, having fallen out of usage it had been abandoned and left unassigned at the Web hosting company Bluehost after that company canceled our hosting account.

Why would that happen? latinintel-tc.com became a major target for hacker attacks. Like most hosting companies, Bluehost has a policy of canceling accounts that suffer repeated security breaches in order to protect their IP range.

So while we controlled the domain, we did not control the content -- until Intel Corporation's filing drew our attention to the matter and we changed the name servers to regain it. Take a look at http://www.latinintel-tc.com now.

And, better yet, take a look at the excellent research by attorney Ronald Coleman on the Bluehost Blond:

Declaration
Exhibit A
Exhibit B

Intel Corporation's legal representation just shot the company in the foot. They introduced into evidence "proof" that Americas News Intel Publishing LLC was using its domain names to profit off of Intel's good name. But they built the argument on a house of cards and in court their entire evidentiary case will have the carpet pulled out from under, as tomorrow's postings will point up.

So the screen shots were damning, after all.

Damning Screen Shots? (Part II)

Yesterday, we wrote:

"Intel Corporation has submitted to the courts three screen shots that intend to demonstrate their allegations that we have abused their trademark for personal and private gain....[W]e will post these screen shots and let readers muse over them."

***You can view the screen shots by clicking on this sentence.***
(The screen shots are at the end of the PDF document.)

They are from our domain http://www.latinintel-tc.com/ and they are:

1. A picture of a blond girl and a number of "related searches" links, mostly with the word "Intel" in them.

2. The results of clicking on the "Intel Drivers" link.

3. A WhoIs service identifying Americas News Intel Publishing LLC as the owner of the site.

This would appear to demonstrate that the defendant, our company, has indeed utilized at least one of the domain names in Intel Corporation's lawsuit in an abusive and illegal manner.

We invite you to view it for yourself. We'll have more on this topic next week.

REPOST: Cease & Desist, And Then Some

Please click on the links below to view:

The first letter we received from Intel Corporation...

Our lawyer's first response...

The final letter we received from Intel Corporation... (Spoiler alert: It's confidential.)

The final letter we sent to Intel Corporation before they filed suit...

Damning Screen Shots? (Part I)

Intel Corporation has submitted to the courts three screen shots that intend to demonstrate their allegations that we have abused their trademark for personal and private gain.

Before Friday, February 19, the day our briefs are due before the court, we will post these screen shots and let readers muse over them.

Stay tuned...

"Therefore Defendant's Motion fails."

Intel Corporation has filed its opposition to our Motion To Dismiss, per protocol.

The argument is divided into three sections:

1. Legal standard - motions to dismiss are rarely granted
2. Intel properly pled its case
3. Defendant inappropriately and incorrectly argues the merits of Intel’s claims, as opposed to the sufficiency of Intel’s pleading

If you don't want to suffer through the entire legalese, linked in a PDF to this post, the conclusion is:

"Tellingly, the crux of Defendant’s Motion is not that Intel neglected to include any necessary elements in its claims for relief, but that Defendant does not believe that Intel will ultimately receive the requested relief. That is not the test."

As a footnote, the Plaintiff adds: "Should the Court nonetheless dismiss all or part of any of Intel’s claims, Intel requests leave to amend." In other words, our motion "fails," but just in case it doesn't...

We are posting this document and summary not in the interest of providing a fair and balanced viewpoint. The document is already a matter of public record. The playing field is already tilted incredibly steeply to the advantage of Intel Corporation.

We are posting this document as a resource for anyone interested in this case, particularly those involved in their own fight with this corporate bully.

So, tellingly, we will resist the temptation to poke fun at their final sentence. Really.

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.

UPDATE: The Honorable Judge Charles R. Breyer, a United States District Judge in the Northern California District, has ordered that the motion hearings and the Court Management Conference be rescheduled to Mar. 19, 2010, a two-week delay from the original date of Mar. 5. The briefs must still be filed this Friday, Feb. 19.

UPDATE: Intel Corporation's counsel has requested a one-week postponement to the Case Management Conference. The court has yet to respond, but this would move the CMC to Mar. 12.

Dismissal Motion Sends Intel Corp. Scrambling!!!

It's time for a long overdue update on the legal process unfolding as Intel Corporation sues us on groundless trademark infringement charges.

We've been busy closing down our Mexico City offices, moving our US headquarters, and, on top of the holidays, have not been very active here. But we're back!

At the end of December, our lead counsel, Ronald Coleman of New York-based Goetz Fitzpatrick LLP, and Colby Springer, our California attorney representing us in the Northern California federal district, of Silicon Valley-based Carr & Ferrell LLP, filed a Motion To Dismiss in response to Intel Corporation's frivolous lawsuit.

Apparently bowled back on their heels, on Jan. 14, Intel Corporation lawyers filed a request for reassignment to a United States District Judge!

What does this mean? The case was initially assigned to a magistrate judge, who would usually handle discovery matters and, if the parties both agree, the actual trial. But either party may bounce the magistrate and opt for an actual judge. The move was purely strategic as it gives them additional time to respond to our motion, and it raises our costs, because we have to "renotice".

In other words, this is great news. If Intel Corporation believed they had a slam-dunk case, they would have merely quashed us via the magistrate. Requesting reassignment elevates their legal costs as well, so it was not done sheerly to rattle our cage.

The case has now been reassigned to the Honorable Charles Breyer, a Harvard and Boalt graduate appointed as a federal judge by then-President Bill Clinton in 1997.

We now must gear up for a Case Management Conference on Mar. 5 with Judge Breyer. At that hearing, we will present our Motion To Dismiss once again.

PLEASE TAKE NOTE! EACH SILLY GAMBIT BY INTEL CORPORATION WILL CAUSE US ADDITIONAL EXPENSE. RON AND COLBY ARE, OF COURSE, CHAMPIONING THIS CAUSE PRO BONO, BUT AMERICAS NEWS INTEL PUBLICATIONS LLC MUST COVER THESE EXPENSES OUT-OF-POCKET.

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