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What Constitutes Trademark Infringement? One Layman's Look

By
Services for Real Estate Pros with ActiveRain

Disclaimer #1: This blog post in no way represents the opinion of ActiveRain Corp. This is my personal opinion. I realize that in my position with ActiveRain, the things I write may be construed as being supported by ActiveRain. In most instances, that is the case. In this specific instance, that is not the case. Again, this is my personal opinion. Some people may feel that I am unable to use this blog to give my personal opinion without somehow having that opinion represent the opinion of ActiveRain. If that is you, don't read this post.

Disclaimer #2: I am not an attorney. Nothing in this post should be construed as legal fact, simply opinion of one layman. I consider the defendant of the lawsuit about which I am about to write a personal friend. My opinions are certainly biased based upon that fact.

Bad things happen to good people. We can all agree, getting sued is bad. And if you've ever met him, I guarantee you can agree Daniel Rothamel is good. Yesterday, Inman news reported that Daniel Rothamel, affectionately known to many of us as The Real Estate Zebra was sued by The Lones Group, Inc., a Bellingham, WA company.

I'll let Inman News tell the full story (although that link may be hid behind their pay wall by the time you click on this). Here is a summary:

Real estate agent and blogger Daniel Rothamel -- known for years to his readers as the "Real Estate Zebra" -- has been hit with a trademark infringement lawsuit by a company that produces a "Zebra Report" and "Zebra Blog" to market its services to real estate agents.

Bellingham, Wash.-based The Lones Group Inc. claims its use of zebra-themed imagery and trademarks predates Rothamel's, and that he is "unfairly diverting business" away from the company.

In a complaint filed Tuesday against Rothamel and his brokerage, Strong Team Realtors Inc., The Lones Group seeks an injunction restraining Rothamel and the brokerage from using "in any manner" the trademarks The Zebra Blog or The Zebra Report, "and any other term or terms likely to cause confusion," including "Real Estate Zebra."

The lawsuit also seeks compensatory and punitive damages in excess of $75,000, including an award for damages equal to three times the amount of actual damages.

 

I'm certainly not a lawyer, but I did stay at a Holiday Inn Express last night, so here are my thoughts, if I was ever to get called for the jury on this one (crap, did I just violate Holiday Inn's trademark? Or would they prefer I mention them........).

This case fascinates me beyond belief. There are so many reasons, but the first one (in order of importance for why I care) is that I really like Daniel. He's a genuinely good guy. He was present the night I met my wife (that's where the picture comes from, that night). I consider him a friend. The second is because I've been party to a lawsuit in the past, and I know how draining it can be to defend yourself against allegations you know believe (the law can be so tricky) to be false. Lowest on my totem pole of 'why this fascinates me' reasons, but the reason this case could be something you know and hear about long after it's gone, is the impact lawsuits can have, on the party initiating them, in the new social media age.

For many people, this will be the first time they ever hear of The Lones Group. I'll admit, I had heard of them previously. They keep a blog on ActiveRain. (they should, their target market is real estate agents and there are a few here). But if this is your first time hearing about them, no doubt your opinion of them is going to to be shaped in some way by the level of respect you hold for me. That's the rub about social media. Everyone has an opinion, but we tend to align ourselves (online and in real life) with people we respect, people we agree with, and people, where we feel there is a mutual benefit to our relationship.

My first reaction was, does The Lones Group have a trademark on the term 'Real Estate Zebra'? After a search of the US Patent and Trademark Office, I can't seem to find a Trademark they hold on that term. But whatever, you don't have to Trademark a word to bring a lawsuit (or maybe I'm just not looking in the right place). In fact, I can't even find anywhere that they call themselves 'The Real Estate Zebra'. They do have a 'Zebra Report' and they do have a 'Zebra Blog'......although that blog doesn't say Zebra Blog in the Header of the blog, or on the title tags of the blog (as Drew Meyer points out). But maybe they aren't claiming a trademark on that term. I don't think they are.

The Lones Group "seeks an injunction restraining Rothamel and the brokerage from using "in any manner" the trademarks The Zebra Blog or The Zebra Report, "and any other term or terms likely to cause confusion," including "Real Estate Zebra."

So they are actually contending that Daniel's use of the term 'Real Estate Zebra' is likely to cause confusion. Alright. Now we have to look at what constitutes trademark infringement.

Courts will generally look at 7 factors in determining trademark infringement:

  1. The strength of the mark
  2. The proximity of the goods
  3. The similarity of the marks
  4. Evidence of actual confusion
  5. The similarity of marketing channels used
  6. The degree of caution exercised by the typical purchaser
  7. The intent of the defandant
So Let's look at each factor.

1. The Strength of the Mark: If social media is any indicator (and I doubt this is what courts look for), the majority of real estate professionals have never heard of The Lones group prior to this lawsuit. In Washington State, I've seen a few comments to the effect that they have a well established presence and a good reputation. In Virginia, where Daniel conducts business, not so much. I've yet to see an agent (or consumer) in that market so much as mention they have even heard of The Lones Group. If I was defending Daniel, I'd be doing some serious polling on what real estate agents think of when they hear the term 'The Lones Group'. How else would you go about determining the strength of a mark?

2. The Proximity of the Goods: This is the one that immediately jumped to mind for me. We can all agree they are both involved in the real estate industry. However, they use the mark to target two distinctly different groups. The Lones Group's target is real estate professionals. Daniel's target is consumers of real estate. Specifically, consumers of real estate in Virginia. Daniel's 'product' is homes in Virginia. The Lones Group's product is marketing services for real estate agents. Daniel has no 'product' that he sells to real estate agents. The Lones Group has no 'product' that they sell to potential homeowners in Virginia.

However, here is where things get a little muddled in my opinion. Daniel is a presenter on the Inman Agent REBoot series. Agent REBoot is a seminar series where various presenters talk about using social media to develop your real estate business. Inman charges for this event, and I would imagine Daniel is compensated for the speaking engagements he does for the event (I have no proof of this, it's just my hunch based on the way things work in this industry). During the course of marketing this event, he is referred to as "Daniel Rothamel, founder of RealEstateZebra.com, @realestatezebra". It's been often asked in the last 24 hours, "Why, after 5 years, now just finally bring this lawsuit?". My guess is Agent REBoot has something to do with it. Could this be why The Lones Group feels that Daniel's use of real estate zebra impedes on their trademark?

3. The Similarity of the Marks: If this refers to the appearance of the marks in the use of marketing a product, they look nothing alike. Daniel's mark is a cartoon of a Zebra's neck and head, with a little blue house (I think that's what it is) as the eye of the Zebra. The Lones Group has an actual full body Zebra, and looks much more traditional. I'd show you the pictures here, but I don't want to be the next person getting served with papers. You can see the difference here and here.

I would have to assume that the similarity of the marks also relates to the wording used. Again, I can find no where that The Lones Group uses the term 'Real Estate Zebra', even though the lawsuit claims their clients refer to them as 'the real estate zebra company'. I can also find no where that Daniel uses the terms 'Zebra Report' or 'Zebra Blog'. In fact, over the years, he has been diehard in his use the term 'Real Estate Zebra'. The only other 'Zebra' term Daniel seems to use is 'ZebraTalk'. He uses this in terms of sharing his passion for selling real estate. That one could get a little muddled too, because his main audience here appears to be other real estate agents. But again, he has no 'product' that he sells. He just freely shares his passion for selling real estate with other real estate agents. Imagine that, a guy FREELY sharing information with his peers.

4. Evidence of Actual Confusion: I can only assume that knowing this is one of the factors in determining trademark infringement, The Lones Group must have some actual evidence of actual confusion. I did see one person comment that upon first stumbling on the realestatezebra.com, she sent an email to Daniel, that was in fact intended for The Lones Group. This was a person that was previously familiar with the Lones Group, and claimed that Daniel's name was not on the site at that time. Certainly no way for me to know for sure, but the wayback machine shows me that in November of 2006, the home page of the site did in fact have Daniel's name on it (albeit a little far down on the right hand column). That being said, a trial would be sure to bring out evidence of actual confusion. This is going to relate to #6, the degree of caution exercised by the typical purchaser.

5. The Similarity of Marketing Channels Used: They are both marketing themselves online. So I'd say there is certainly a similarity of marketing channels used. But who isn't marketing themselves online these days? That darn Agent REBoot keeps coming back as a potential pitfall in Daniel's defense. If I were him, I'd stop doing these, or at least stop getting paid to do them.

6. The Degree of Caution Exercised by the Typical Purchaser: The first time I became acutely aware of The Lones Group was about a week or two ago. After writing a post about branding, I had a phone call with a member of ActiveRain. This person is certainly a 'typical purchaser' of The Lones Group's product, marketing assistance for real estate agents. In fact, she discussed with me the expense of working with The Lones Group. She said that she loved the work they do, and really thought it would be something that would benefit their business, but she couldn't afford it. It was too expensive for her. It would generally follow that the more expensive a purchase, the higher degree of caution exercised by the typical purchaser. Daniel's typical purchaser is buying a house. The Lone's Group's typical purchaser is buying an expensive marketing package. We are not dealing with candy bars or soda; meaningless purchases that people don't give second thought to. There is no way that someone would contact Daniel, engage him in marketing services, thinking they had contacted the Lones Group, and then have him perform marketing services for them without investigating enough to get past the possible confusion of the real estate zebra and 'Zebra Report' or 'Zebra Blog'. Let's review....Daniel doesn't provide this type of service. He sells homes to people in Virginia.

7. The Intent of the Defandant: How do you prove intent? In the lawsuit, The Lones Group claims "As a result of Defendants’ conduct, Plaintiff has suffered harm to its reputation and goodwill, and unless Defendant is restrained and enjoined, Plaintiff will continue to suffer harm from Defendants’ conduct." So his intent is to harm their reputation and goodwill????? Are you joking me? Daniel has hundreds (probably thousands) of articles online, he has over 15,000 tweets. I GUARANTEE you that there is not one thing done or said by Daniel that was intended to harm the reputation or goodwill of The Lones Group. And further, I guarantee there is not one thing he's ever done that caused harm the Lones Group's reputation, intended or not.

Maybe they are arguing that his intent was to gain notoriety based on their already established reputation. The problem is, Daniel has a well documented reason that he uses real estate zebra. He is a referee. He has refed high school and college basketball games. He often talks in his blog about officiating. Everyone knows that we call refs 'zebras'.......usually when we are screaming at them for botching a call against our team, but nonetheless, we call refs 'zebra'. I just keep thinking, Why did he choose to go with a logo that highlighted an actual zebra, instead of one that used a whistle and a referee jersey. I wonder if that would have made a difference. I also have to wonder if that wouldn't have been a better choice for his overall brand.......we all know that a good referee is hard to find, and every real estate transaction needs someone that can keep their cool when people are screaming from the sidelines.

I'm assuming this blog post will remove me from the potential jury pool. I would bring many pre-conceived notions to the jury room and would no doubt be unable to render an unbiased opinion. I already told you, I consider Daniel a friend. But the reality is, even trying to take an antagonistic point of view, I can't seem to find the merit in this lawsuit. That being said, I'm not a lawyer. These cases are highly technical. You have to know if Daniel did successfully defend himself from this lawsuit, the lawyers still get paid. So take a minute visit the website set up by Jay Thomspon to help defer some of the costs associated with Daniel's defense.

There are a ton of other great posts out there coming to Daniel's defense. They are written by people I respect. They give you some great insight on various aspects of this action. Here they are, in no particular order:

Jay Thompson gives us, as Jay always will (that's why I respect him), his opinion. It's also a good overview of the case and the reaction to the case on different social media channels.


Jeff Bernheisel shares his opinion of how this lawsuit could affect the brand of The Lones Group. He also publishes a response he received from The Lones Group regarding the lawsuit.

Jeff Turner encourages people to pay attention to their true brand, and what a true brand actually represents.

Todd Carpenter surmises that Daniel doesn't need those stripes to maintain his brand and wonders if The Lones Group can say the same. Interestingly enough, Todd thinks Daniel could win the case, but the cost to do so may not be worth it. He says Daniel may be advised to "Drop the stripes and move on". You'll see why when you read his post.

Chris Brogan reminds us that legal defense is not cheap and most of us (me included) don't know the ins and outs of trademark law. However, he profiled Daniel, and his brand in his book trust agents and reminds us that even when you win a legal case, you lose because it's so expensive to defend yourself.

You'll also see some of your favorite ActiveRain bloggers writing about it today and in the days to come. Why? Because Daniel Rothamel is a genuine guy, who we all respect......and for a company that teaches agents how to develop a brand, this lawsuit leaves me befuddled and wondering, "Huh?......Why?"

 

Posted by

Bob Stewart
ActiveRain Ambassador

 

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Comments (100)

Lee & Pamela St. Peter
Berkshire Hathaway HomeServices YSU Realty: (919) 645-2522 - Raleigh, NC
Making Connections to Success in Real Estate

Lots being said about this Bob, I just read her rebuttal on her site.  <sigh> This is such negative energy...  Even reading her case in her her attorneys words it doesn't hold up.  She didn't trademark the Zebra, and quite frankly anyone looking at the two of their marketing will see IT'S COMPLETELY DIFFERENT except for that darn Zebra! Real Estate Zebra ~ Zebra report...  case for a lawsuit?

Lenn found the best defense... 

Pamela
A Graceful Giraffe in Raleigh

don't sue me.

Mar 02, 2011 10:08 AM
Lindsay Pendleton
Relocating To Baton Rouge & Surrounding Areas - Baton Rouge, LA
Marketing Agent - Property Management in Baton Rou

Mar 02, 2011 03:51 PM
Christie Lane Craven
Blackwell Real Estate - Odenton, MD
Your Anne Arundel County Agent

Bob- I love your passion about this.  I don't know either party, but I have been following along on the lawsuit and it seems like a clear case of bullying by the Lones Group.  I think their plan was to file the lawsuit and scare Daniel into changing his brand.  It's funny that a company that professes to want to help agents develope and market their brand (who should know the time and expense involved in getting recognized and associated with your brand) wanted him to scratch all that and start all over just because they decided it didn't suit them.  Are they honestly saying that there are real estate agents in WA that wanted to use the Lones Group to help their marketing but they called Daniel and ended up buying a house in VA instead???

Mar 02, 2011 06:50 PM
Lynn B. Friedman CRS Atlanta, GA 404-617-6375
Atlanta Homes ODAT Realty - Love our Great City - Love our Clients! Buckhead - Midtown - Westside - Atlanta, GA
Concierge Service for Our Atlanta Sellers & Buyers

Dear Bob,

First, I am glad that you take the time to share your own opinion.  Even if you have "given" us this AMAZING AR site and community - you are still entitled to be Bob.

Second, I certainly agree with Craig (#62) -- everything he said!

Third, I really agree with those who believe that Lones has hurt Lones more than anyone or anything else.

As stated above, I would never use any of their services.  How dumb - no one had a WA/VA confusion.

To quote a line from the BEATLES found in "Hey Jude" --- 'Only a fool would make a cold world colder.'

Have a happy day -
Lynn

Mar 03, 2011 03:54 PM
Maia Whitaker
Superior Notary Service | Allstate Insurance - Boulder, CO
Your Trusted Notary & Insurance Advisor

Good points and lots to consider!  Thanks for the post, Bob.

Mar 05, 2011 05:29 PM
Joy Baker
RE/MAX Insight - Salem, NH
So NH RE & Short Sale Specialist

This seems to me to be a fools errand on the part of The Lones Group.  If the main thrust of your business is marketing to real estate agents then ticking off the real estate community by a frivolous lawsuit aimed at a very popular and well respected agent is not the way to win friends and influence people.  Just my opinion....

Mar 08, 2011 01:11 AM
Janice Roosevelt
Keller Williams Brandywine Valley - West Chester, PA
OICP ABR, ePRO,Ecobroker

I admit I have not been following this, but a lot of folks have. May the righteous win!

Mar 09, 2011 01:45 AM
Shannon Coe
exp realty of California, Inc. - Oceanside, CA
760-586-5268, San Diego Realtor

Wow great information. Thanks for sharing...we do not know what we do not know

Mar 09, 2011 05:27 AM
Carla Muss-Jacobs, RETIRED
RETIRED / State License is Inactive - Portland, OR

I don't know what they want to accomplish by this . . . to personally harm a man and cost him to defend against this suit.  Lawyers manipulate the laws and what was once in place to perserve something, like a trademark, is now spun around and used to attack. 

Mar 09, 2011 05:30 AM
Christine Pappas - REALTOR®
eXp Realty - Willoughby, OH
When You’re Ready To Move, I’m Ready To Help

I'm sorry, but this is yet another example of our legal system gone awry and the big guy trying to stomp on the little guy!  How can a judge even except this case?  Why not mediation?  And I thought God created the Zebras, so how does anyone have the right to say it is theirs?

 

You are 100% right about your own personal influence Bob!  I have never heard of Lones Group and since I know and respect you I favor your opinion.

Good luck to your friend!  Gees, in an already difficult time, this has to happen. An honest guy trying to make an honest living.  It certainly does not sound like there was any intent to ride on the Lones Group coattail.  I will pray for him!  God can move mountains! 

 

Mar 09, 2011 07:55 AM
Patt M. Judd
First Realty Company - Cookeville, TN
Realtor - Your Cookeville Connection

Bob- I love your passion about this.  I don't know either party, but I have been following along on the lawsuit and it seems like a clear case .  I think their plan was to file the lawsuit and scare Daniel .  I think that professes the want to help agents develope and market their brand . Are they saying that there are real estate agents there that wanted to use the Lones Group to help their marketing. This is how i feel for what its worth.

 
Christie Lane Craven (Long & Foster)
Mar 09, 2011 09:49 AM
Conrad Allen
Re/Max Professional Associates - Webster, MA
Webster, Ma, Realtor

Hi Bob - You have to stop staying at Holiday Inns:)  Interesting blog.

Mar 09, 2011 12:14 PM
Mike Mayer
Mike Mayer, Broker/Owner - i List For Less Realty, LLC - Lafayette, LA

When I learned of this and read the story I simply shook my head in disbelief. I truly hope Daniel survives this unscathed. This suit appears frivolous and without merit. 

Mar 09, 2011 05:01 PM
Arleen Montford
KELLER WILLIAMS REALTY GULF COAST - Pace, FL
Selling NW Florida Homes in Pace/Milton/Pensacola FL

Good Morning Bob, I have you on my buddy list because I do not want to miss you when you post. You know Kinda like "When Bob speaks ....people listen" But the last two time it showed that you posted I could not find your new post. Don't leave me out. I need to learn everything I can.

Mar 09, 2011 08:03 PM
Harry F. D'Elia III
WEDO Real Estate and Beyond, LLC - Phoenix, AZ
Investor , Mentor, GRI, Radio, CIPS, REOs, ABR

Many businesses add being represented by a law firm as an expense in the hopes of obtaining advantage by suing in court. Many bigger firms know that smaller entities run out of money.

Mar 09, 2011 11:57 PM
Larry Lawfer
YourStories Realty Group - Newton, MA
"I listen for a living." It's all about you.

Bob, thanks for taking your time to share all this information.  Whether or not the corporation succeeds i bringing down the little guy, I for one, will never, ever purchase a product or service from them.  In this case all news is bad news for them.  My perspective and ocassionally I will dress like a lawyer, but I will always tell you the truth.

Mar 10, 2011 02:19 AM
Terry & Bonnie Westbrook
Westbrook Realty Broker-Owner - Grand Rapids, MI
Westbrook Realty - Grand Rapids Forest Hills MI Re

It does seem that they are making a decision that is short sighted. Daniel would be a better ally than an opponent.

Mar 11, 2011 05:31 AM
Alice Broadway
IXL Real Estate - Mobile, AL
Real Estate Broker

Very interesting reading, thanks for the post. I certainly hope this case is goes in favor of Daniel. Keep us posted. Wish there was something we could do to help.

Mar 12, 2011 04:23 PM
Ann Bellamy
Hard money lending for investors in NH and MA - Tyngsboro, MA
Lending to real estate investors since 2006

Great information, thanks for the well crafted and thought out post.

Mar 12, 2011 11:50 PM
Phil Leng
Retired - Kirkland, WA
Phil Leng - Retired

Hi Bob,

I know and like Denise Lones.

She happens to like zebras personally. So she has zebras all over her house.

BUT -

This lawsuit is nuts!

I think she ends up losing big time from this.

PHil

Mar 14, 2011 07:04 PM