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Response to Spurious TradeMark Claims

Dear Ms. Milan:

Thank you for your correspondence of April 1, 2009, raising concerns regarding your clients’ purported ownership of the trademarks   Werestagâ„¢ and Weredeerâ„¢.   You claim that we are engaged in action that will inappropriately dilute and confuse the consuming public over the use of the mark “WereDeer” in conjunction with the sale of DEER LICK SEASON and its accompanying sequels by Ann Aguirre to Malle Vallik.  

Unfortunately, I fear that your clients may have mislead you regarding the facts of the situation.   First, as you know, trademarks are only given protection if they are registered.   I find no registration for said marks.   Further, these marks your clients purport to maintain are descriptive marks and as such are only entitled to protection if they have acquired a secondary meaning.   

As Werestag and Weredeer are merely useful terms in describing the underlying product, that is, stories featuring shapeshifting four legged beasts having “four chambered stomachs with or without prongs” as you so aptly describe them.   Allowing your clients the exclusive rights to these terms would confer an unfair advantage.  

Given that these terms have no secondary meaning, serve only to describe the underlying product, and lack actual registration, your claims must fail. In other words, you can suck it.

Best regards

Jane Litte

Dear Author Literary Agency, part of the D.A.M.N.

Jane Litte is the founder of Dear Author, a lawyer, and a lover of pencil skirts. She spends her downtime reading romances and writing about them. Her TBR pile is much larger than the one shown in the picture and not as pretty. You can reach Jane by email at jane @ dearauthor dot com

23 Comments

  1. Courtney Milan
    Apr 01, 2009 @ 11:24:39

    Au contraire.

    The trademarks in question have been registered since 1997, US Trademark registration number 3522828. Just look it up. I dare you.

    Further, as you should know, even if the marks are merely descriptive, which we do not admit, that is of no consequence. Because the marks have been on the principal trademark registry for more than five years and in continuous use in service, the fact that the marks are merely descriptive is immaterial, as the trademark is now incontestable. Read section 15 of the Lanham Act and weep.

    http://www.bitlaw.com/source/15usc/1065.html

    I suggest you settle.

  2. Anon Author
    Apr 01, 2009 @ 11:33:55

    I’m just an onlooker, not a lawyer, but the USPTO doesn’t have it in their database.

    http://assignments.uspto.gov/assignments/q?db=tm&qt=rno&reel=&frame=&sno=&rno=3522828&asnr=&asnri=&asne=&asnei=&asns=&apct=&apcti=&rgst=&rgsti=

    You can do your own search:
    http://assignments.uspto.gov/assignments/?db=tm

    Zip. Nada. Nothing.

  3. Jane
    Apr 01, 2009 @ 11:37:57

    @Courtney Milan: Rent-A-Ruminant is not the same thing as a trademark for weredeer and werestag. Further, the registered mark to which you refer protects a product related to weed control and not shapeshifting four legged four chambered animals. As you know, marks are used to “identify a particular manufacturer or seller’s products and distinguish them from the products of another.”

    Therefore the use of werestag/weredeer by Ms. Aguirre does not dilute or confuse the market for weed control.

    We will be pursuing a Rule 11 claim of sanctions against you.

  4. Ann
    Apr 01, 2009 @ 11:40:27

    Courtney is so mean! Why must she attempt to squash my creative genius??? The were-deer market is wide open right now. There is room for all authors to tell the stories of their harts.

  5. Courtney Milan
    Apr 01, 2009 @ 11:43:41

    Ha. Your inability to read or conduct a search does not surprise me. As I am sure you know, the facts of a case are strange, malleable, things, which are determined entirely by what I manage to keep out of the appellate record–uh, I mean, by what is true.

    The trademark in question reads as follows:

    (words only): WEREDEER, WERESTAG, WERECOW, WEREBULL, WEREGOATS, WEREGIRAFFES, and OTHER WERERUMINANTS

    Standard Character claim: Yes

    Current Status: Registered.

    Date of Status: 1998-10-21

    Filing Date: 1997-08-07

    Registration Date: 1998-10-21

    Register: Primary

    Law Office Assigned: LAW OFFICE 103

    Your insistence that such a trademark does not exist, even when backed up by your sock-puppet account “Anon Author,” surely will not hold up in a court of law. The truth is plainly obvious.

    You will be made to sweat until salt collects on your extremities, and our weredeer lick it ALL OFF.

  6. Courtney Milan
    Apr 01, 2009 @ 11:47:53

    @Ann: You are free to write the book of your hart, so long as you refer to it as the were-four-legged-beast-with-a-four-chambered-stomach-with-or-without-prongs series.

    Thanks for complying!

  7. Robin
    Apr 01, 2009 @ 11:50:24

    @Courtney Milan: Jane is correct; you cannot piggyback off another’s trademark; in fact, I would suggest that Rent-A-Ruminant might have a viable claim against you for infringing on THEIR trademark. In any case, you have no right to enforce another’s trademark or use that trademark to block another’s lawful exercise of their own IP rights.

    Since the terms in question are not under trademark in their current meaning, they are not protected and can be used by any client of Jane Litte.

  8. Kristen
    Apr 01, 2009 @ 11:50:48

    In other words, you can suck it.

    This might be the best thing I’ve read online all day. WIN!

  9. Courtney Milan
    Apr 01, 2009 @ 11:56:35

    @Robin: I am aghast! I do not know what this “RENT A RUMINANT” is that you all speak of. Or what piggy-backing has to do with any of this. Pigs are not ruminants!

    Good heavens. When one can’t even reference a perfectly valid trademark registration for perfectly valid trademarks, without people denying what is RIGHT BEFORE THEIR EYES, then surely you are all deceiving liars.

    What is this world coming to?

  10. Maya M.
    Apr 01, 2009 @ 11:59:40

    As observed before: April Fools Day, AKA ‘When Literary Lawyers Come Out to Play’.

    And: Haha, ‘the book of (Ann’s) hart’ – when I first saw that, I just thought it was LOLstag spell for ‘heart’, but it is so much more. Great pun.

  11. Robin
    Apr 01, 2009 @ 12:04:19

    @Courtney Milan: Of course pigs are not ruminants! Geesh. But that will not stop you from trying to claim ownership of “werepig.”

    And now that we’re on the subject of pigs, weres are so ubiquitous in paranormal Romance — and are likely planning a massive infiltration into other subgenre, including RS, UF, ER, and even Inspy — that they are not sufficiently distinctive enough to warrant trademark protection.

    Which, in the uber-professional language of the DA Literary Agency, translates to suck it with a side of bacon!!!!!!!!!!!!!!!!!

    XOXOXO

  12. Courtney Milan
    Apr 01, 2009 @ 12:21:23

    My error. I realized that I transposed a number in the trademark registration number above.

    Instead of trademark number 3522828, it should be 3252828. I see now why everyone seemed to be so fixated on the rent a ruminant thing. Seriously, guys…. renting a wereruminant? That would be totally skanky. Tessa Dare’s wereruminants are available in a variety of open formats on a for-purchase basis from Samhain Publishing.

    For those of you who do not believe this trademark exists, please to be looking at this perfectly valid trademark registration from a perfectly valid trademark office url: http://tinyurl.com/d6c9h8

    As for you, Robin, as you can see, the trademark registry above explicitly disclaims both wererabbits and werepigs.

    And all this talk of sucking is inappropriate and unprofessional. Everyone knows ruminants don’t SUCK. They LICK.

  13. Deb Kinnard
    Apr 01, 2009 @ 12:24:18

    While we’re on the topic, steer widely clear of using the term “Rent-a-Rodent” which belongs to me, moi, mi, myself. And Rent-a-Rodent, as we fic authors well know, is the driving force behind life, the universe, the number 42, and everything.

    Mwahh-hhahh-hahh! Chitter.

  14. Teddypig
    Apr 01, 2009 @ 12:31:31

    That’s it I am trade marking weromance and werotica

  15. Robin
    Apr 01, 2009 @ 12:54:26

    @Courtney Milan: All you have done is obfuscate a perfectly clear situation with your confused but articulate responses!

    As to your alleged perfectlyvalidtrademark, those people at the perfectlyvalidtrademark office must have been asleep at the blotter to allow such an overbroad, overreaching, and abusive use of the trademark code to pass muster under their otherwise stellar review process.

    Fortunately, we will not have to challenge the validity of the alleged mark, since we see that the alleged mark was allegedly registered in 1997, making this the first detected attempt to enforce the mark in 12 years. We deem that a patent abandonment of said alleged mark, resulting in the loss to your client of any and all alleged rights to alleged mark, and allowing unleashed use of it by any and all clients of Jane Litte.

    In fact, to celebrate the liberation of the terms, please expect the upcoming announcement of the upcoming publication of a new anthology, TO LOVE A WEREDEER, WERESTAG, WERECOW, WEREBULL, WEREGOAT, WEREGIRAFFE, and other WERERUMINANT, all titles penned by Jane Litte and a variety of well-respected pseudonyms.

  16. Tessa Dare
    Apr 01, 2009 @ 15:02:43

    I am so, so sorry.

    I’ve returned from a morning offline to find my novella the center of a legal controversy! Courtney Milan’s efforts to protect my novella, The Legend of the Werestag, from becoming a stale joke before it even is published (by Samhain Publishing, on May 12) were no doubt well-intentioned. However, I am deeply disturbed by her shameless misrepresentation of both legal fact and romantic fiction in this entire exchange. Ms. Aguirre and here wereruminant trilogy have my apologies and my best wishes for salty-sweet success.

    Full apology here.

  17. Anon Author
    Apr 01, 2009 @ 15:48:30

    Apparently, I fell for the joke, not realizing it was one. I was all over the trademark registry, seriously looking. My stupid.

    p.s. I am not anyone’s sock puppet. I am real!

  18. Tessa Dare
    Apr 01, 2009 @ 16:21:56

    Don’t feel bad, Anon Author. Courtney is scarily convincing. In fact, there’s only one thing I’ve ever seen her fail to pull off convincingly. That would be: pretending she’s not a lawyer.

  19. Courtney Milan
    Apr 01, 2009 @ 16:30:07

    @Tessa Dare: Don’t listen to Tessa. She can’t even tell that there’s a werestag in her own book.

    Because . . . does anyone ever see the stag and Denny in the same place at the same time?

    <..>

    Much love,
    Courtney Milan LLC
    misrepresenting both fact and law
    Since 2006.

  20. Tessa Dare
    Apr 01, 2009 @ 16:39:11

    @Courtney Milan: OMG, you’re RIGHT. Of course, that would contradict the “cursed to roam the forest” bit – but then, it’s Denny’s story…

    V V
    **

    *trying to figure out how to make ASCII-stag* FAIL.

  21. Courtney Milan
    Apr 01, 2009 @ 16:43:38

    <
    /)___
    ‘\ _ )’
     |\ \| pb

    Hard to do ascii art without a fixed width font

  22. Lindsey
    Apr 01, 2009 @ 17:31:30

    @Tessa Dare: I sense a sequel!

  23. Tessa Dare
    Apr 01, 2009 @ 17:41:55

    @Lindsey: Lindsey, you know what happens when you toss out little ideas like that…

    THE RETURN OF THE WERESTAG would be an awesome title.

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