[E-trademarks] [EXT] Re: Dirt Candy TM Dispute

Sat Feb 15 04:32:01 UTC 2025

That’s exactly what I was thinking – why was a C&D letter ever sent. Where was the possibility of confusion – at the USPTO? On the Internet?

Thanks for posting this, Sharon. I kept seeing a link to this in my daily NYT email and wanted to read it but was firewalled out of it.

Alex Butterman
Partner
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Davis, Ted via E-trademarks
Sent: Friday, February 14, 2025 5:37 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Davis, Ted <TDavis at ktslaw.com>
Subject: [EXT] Re: [E-trademarks] Dirt Candy TM Dispute

          A single-location federal registrant on the Lower East Side and a single-location junior user 1,778 miles away in Wimberly, Texas?

          No need to go on the offensive and burn $10,000 on an ill-fated application when you can respond with two words: Dawn Donut.

[Kilpatrick Townsend & Stockton LLP]
Ted Davis
TDavis at ktslaw.com
<mailto:TDavis at ktslaw.com>Kilpatrick Townsend & Stockton LLP
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Laura Geyer via E-trademarks
Sent: Friday, February 14, 2025 5:31 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Laura Geyer <lgeyer at ndgallilaw.com<mailto:lgeyer at ndgallilaw.com>>
Subject: Re: [E-trademarks] Dirt Candy TM Dispute

Totally. I once was dealing with a situation where “opposing” counsel was so obstructive, self-important, bumptious, and just generally an assclown (and not an IP lawyer) and also nearly impossible to reach was in a situation where I knew 100%

Totally.

I once was dealing with a situation where “opposing” counsel was so obstructive, self-important, bumptious, and just generally an assclown (and not an IP lawyer) and also nearly impossible to reach was in a situation where I knew 100% that my client and the other party were in agreement about nearly everything and everybody wanted the deal. He kept calling me “sweetie” and not the way my grandad could get away with and bragged about all the big deal actors he’d allegedly represented and had to run to a meeting with right now bye.

I finally had to suggest the client reach out to their counterpart and let them know that their attorney was refusing to negotiate and kept threatening things I was pretty sure his client hadn’t authorized him to say like [list of things].

I also suspected he was coked to the gills, but I didn’t say that. They ended up firing him, and their formerly  more junior lawyer and I took the terms our clients had agreed to, turned them into the ridiculously simple agreement the situation called for, and called it a week.

Jeepers.

Laura Talley Geyer | Of Counsel

ND Galli Law LLC
1200 G Street, N.W., Ste 800
Washington, DC 20005
Tel: (202) 599-9019 (direct)
https://ndgallilaw.com/laura-geyer/
https://ndgallilaw.com/

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Sam Castree via E-trademarks
Sent: Friday, February 14, 2025 3:34 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Sam Castree <sam at castreelaw.com<mailto:sam at castreelaw.com>>
Subject: Re: [E-trademarks] Dirt Candy TM Dispute

EXTERNAL EMAIL
Agreed.  I've told many a client that, while I'd be happy to get involved in things, it can really change the dynamic when suddenly the lawyers get brought in.  Coaching from the shadows is often the way to go.

Cheers,

Sam Castree, III

Sam Castree Law, LLC
3421 W. Elm St.
McHenry, IL 60050
(815) 344-6300

On Fri, Feb 14, 2025 at 2:29 PM Cumbow, Bob via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
So glad to see that so many of my colleagues agree with what I've learned during my time as an attorney: We always get a better results if we see ourselves as collaborators rather than combatants.

Bob

 Cumbow

Partner

Miller Nash LLP

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-----Original Message-----
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Eric Morton via E-trademarks
Sent: Friday, February 14, 2025 11:48 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Eric Morton <emorton at clearskylaw.com<mailto:emorton at clearskylaw.com>>
Subject: Re: [E-trademarks] Dirt Candy TM Dispute

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I heartily concur. I tell my clients to talk to me before they negotiate and after they negotiate, but leave the lawyers out of the negotiations.

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Eric D. Morton
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-----Original Message-----
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> On Behalf Of Carl Oppedahl via E-trademarks
Sent: Friday, February 14, 2025 11:29 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Carl Oppedahl <carl at oppedahl.com<mailto:carl at oppedahl.com>>
Subject: Re: [E-trademarks] Dirt Candy TM Dispute

 Over the span of many years, I have seen many situations where the step of getting lawyers into the situation made things far worse instead of better.  Many times my suspicion is that most of the blame would lie with one of the lawyers and not the other. That the blameworthy lawyer would either consciously or subconsciously select the behavior path that would make the most money for the lawyer, regardless of whether this would align with the interests of that lawyer's client.

There are many times where I ended up coaching my client about stuff, and then I suggested my client speak person-to-person with the nonlawyer human being on the other side.  And the clients would come back with a deal sketched onto a cocktail napkin.  The lawyers were then told "make it so".

And even then I can think of many times where once again the introduction of the lawyers into the situation, post-cocktail-napkin, ruined everything.  And again I would have the suspicion that most of the blame would lie with one of the lawyers.

Early in my law career some very seasoned lawyer tried to explain to me what the phrase "attorney and counselor-at-law" might mean in a better world.   That the service provider ought to be a counselor as well as (or sometimes instead of) being an aggressor.

On 2/14/2025 11:50 AM, Pamela Chestek via E-trademarks wrote:
>
> On 2/14/2025 10:23 AM, Miriam Richter, Esq. via E-trademarks wrote:
>> one month to rebrand is unrealistic in the best situation and use of
>> the term “unlawful violation” in a “supportive” C&D is not conducive
>> to warm and fuzzy feelings
> Hear, hear. The client asked for a "nice" cease and desist letter and
> this sounds anything but nice to me.
>
> Pam
>
> Pamela S. Chestek
> Chestek Legal
> PLEASE NOTE OUR NEW MAILING ADDRESS
> 4641 Post St.
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> http://www.chesteklegal.com
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