• A Good Tacking Decision

    by  • March 30, 2011 • trademark

    Boathouse Group, Inc. v. TigerLogic Corp. is a priority dispute between two trademarks for software used to enhance the functionality of social media sites. The plaintiff’s mark was POSTPOST, located at postpo.st, and the defendant’s was POSTPOST, located at postpost.com.  Given the identicality of the marks, the only question was whether the services were similar enough that there would be likelihood of confusion – they were.

    The part of the case that drew my attention was defendant TigerLogic‘s defensive acquisition of a trademark that predated plaintiff Boathouse Group‘s first use date. TigerLogic had the trademark assigned to it by a company called DK New Media and then licensed it back to DK New Media.

    The concept here is “tacking.”  One can claim the first use date of the earlier use as one’s own if there is sufficient continuity:

    A valid assignment requires that the products or services be sufficiently similar to prevent consumers of the products or services offered under the mark from being misled from established associations with the mark. Minor or expected variations or alterations in the quality or characteristics of the product will not invalidate the assignment. 

    By contrast, an assignment is ineffective to transfer the assignor’s priority if the assignee uses the mark on substantially different goods or services. Use of the mark by the assignee in connection with a different goodwill and different product would result in a fraud on the purchasing public who reasonably assume that the mark signifies the same thing, whether used by one person or another.

     Boathouse Group’s first use date was August, 2010 and TigerLogic’s own first use date, without the benefit of tacking, was December, 2010 (in a December 7 press release, according to the Complaint). The acquired trademark’s first use date was February 2007.* So if TigerLogic could tack to the DK New Media’s first use it was the senior user, but if it couldn’t it was a junior user. 

    The acquired trademark was for a WordPress plug-in called POSTPOST. Since you’re here reading a blog, you probably know that WordPress is a blogging platform. The POSTPOST add-in was used to append a preface or footnote to a blog entry so text would appear in a certain location on the screen.  The TigerLogic software compiles links, pictures and videos posted on Facebook and presents them to users in a newspaper format. These two uses weren’t close enough for TigerLogic to claim the earlier first use date, according to the court:

    Here, although DKNM’s plugin and TigerLogic’s application share some general and broadly-construed similarities (e.g. both are used on the internet), they seem otherwise unrelated with different purposes, thus making the assignment ineffective for the purpose of transferring priority. DKNM’s plugin is an optional feature designed to work with specific software. It has limited functionality, requires the user to input content and lacks a search feature. Furthermore, it does not rely on or require access to a user’s social network to function, unlike the applications of TigerLogic and Boathouse.

    By contrast, TigerLogic’s application is premised on access to information generated by a user’s social network and has the ability to aggregate that information or allow the user to search, edit and delete content. While DKNM’s plugin is a feature of the WordPress platform, TigerLogic’s product is an application itself. DKNM’s plugin and TigerLogic’s product are substantially different such that TigerLogic’s use of DKNM’s mark in connection with TigerLogic’s application (instead of DKNM’s plugin) may result in fraud on the public and consumer confusion.

    The court also questioned whether the assignment and license-back was valid at all. (Practice tip – date the license-back AFTER the assignment, not the day before.) TigerLogic acquired the trademark in December 28, 2010, after the lawsuit was filed on December 9, 2010. The court recognized the arrangement for what it was – a ploy:

    [I]t constitutes an obvious attempt by defendant not only to evade liability for conduct that likely constituted infringement at the time this suit was filed, but also to transform the suit into one focused on plaintiff’s purported infringement of defendant’s mark which only materialized, if at all, after the assignment.

    This thrills me.  I find assignment/license-back arrangements to be entirely suspect, especially in the context of an ongoing litigation. There may be valid reasons for it – such as where the original trademark owner has manufacturing capability that the assignee does not, like in Syntex Labs., Inc. v. Norwich Pharmacal Co., 315 F. Supp. 45 (D.N.Y. 1970) – but that’s the rare case where there actually is identicality of goods.  Nice to see it didn’t work here.

    And what does this do to DK New Media’s license? I haven’t thought about it before, but it is a cautionary tale for the assignor/licensee. DK New Media now finds its own use constrained by the preliminary injunction, since “The defendant TigerLogic Corporation shall not expand the plugin it acquired by assignment from DK New Media for use beyond WordPress.”  It doesn’t look like the WordPress POSTPOST plug-in is available at all right now:

    (click for larger view)
    DK New Media got a whopping $5 grand for the trademark assignment. Hope it was worth it.

    Pending posting of bond, TigerLogic is enjoined from using the mark POSTPOST “in association or connection with its so-called ‘social newspaper’ application” and has to include a disclaimer on its site:

    Boathouse Group didn’t get off quite scot-free; it was also enjoined from expanding its business into Facebook while the case is pending.

    Technology & Marketing Law Blog post on the case here.

    *I note that the blog post purporting to be from February, 2007 has this at the bottom – “Looking for the other PostPost? Our friends at TigerLogic also have a product called PostPost in the social media space that aggregates your Facebook content intelligently into a virtual newspaper. Very cool!”  Given that defendant TigerLogic’s POSTPOST didn’t exist until three years after the post was supposedly published, this clearly was added later. I think it’s bad practice to change pages substantially without noting they’ve been updated.  Particularly if it was done after a lawsuit about the mark was filed.

    Boathouse Group, Inc. v. TigerLogic Corp., No. 10-12125-NMG (D. Mass. March 3, 2011).

    Creative Commons License
    The text of this work is licensed under a Creative Commons Attribution-No Derivative Works 3.0 United States License.