Friday, July 21, 2006

An Index Of The Marx Filings . . . #6

Post #6

Noah suggested I do a brief timeline and index of what has happened in our ongoing battle and then fill in the details as needed. So, here goes:

1. December 2005: The Cease & Desist letter from Jay Horowitz and APE

2. January 2006: Toytrackerz files for Declaratory Judgment - seeks no damages, just a decision of trademark status from the judge.

3. February 2006: Jay's attorney removes to federal court and asks for his first time continuance. Receives 30 days.

4. February/March 2006: Toytrackerz' trademark applications are published for opposition.

5. March 2006: Jay's attorney files Answer & Counterclaim, seeking six-figures in damages.

6. March 2006: Toytrackerz files motion to remand the case to state court.

7. March 2006: Jay's attorney files for his second continuance to answer remand motion.

8. March 2006: Toytrackerz files a pair of preliminary procedural motions.

9. March 2006: Jay's attorney files for extensions of time on the trademark applications.

10. April 2006: Jay's attorney files for third and fourth continuances on the procedural motions.

11. May/June 2006: Back and forth responses/replies on the procedural motions.

12. June/July 2006: Time limit on trademark oppositions expires and opposition period terminates on CXR, JWA and BOTW. Applications are put back in the queue for registration.

13. July 2006: Toytrackerz files a motion for Partial Summary Judgment regarding those three trademarks. Decision is pending.

That's it in a nutshell. Any questions? Drop me a note via the blog, the Ranch or leave a comment. It's been a long frustrating haul with a lot of delays. However, we've withstood every blow so far and have no intention of changing our strategy.

Thanks - Terri

The Mushroom Cloud Over Ohio . . . . #5

Post #5

If I look to the east, I can see the faint outline of a mushroom cloud over Ohio. I've heard from several sources that the radioactive fall-out and waste is also pouring through the other message boards.

I, apparently, am a scumbag . . .

What you won't see in the blog or on the Ranch is name-calling. The person who owned those eBay listings has made herself a direct combatant in the lawsuit and now can't sit on the sidelines whining and moaning about what big bad Terri did to her. What I 'did' was made a business and legal decision. I can't allow my actions to be dictated by what someone might say.

Thanks to everyone who is coming to our support. It means the world to us. Terri

An Aside . . . . Trademarks and VeRO . . . #4

Post #4

This is an aside based on things that have happend in the last 24-48 hours.

Last summer [yup, a year ago] we filed for Federal registation of three trademarks:

1. Circle X Ranch
2. Johnny West Adventure [red/black logo]
3. Best of the West [the swoopy dark orange/brown logo]

With a couple of small amendments, all three applications were approved for 'publication for opposition.' This means your marks are published in a governmental catalog for the world to see and anyone who thinks they could be damaged by your use of the trademark can file what's called 'an opposition.' This is a short legal document [1 - 2 pages] that starts a miniature lawsuit at the federal level over the validity of the trademark and application.

It was kind of cool seeing our marks published! But, now it was time to wait for 30 days.

Jay's attorney, stepped in and filed on all three marks. Did he step up and file an opposition that we could stand up and fight? Nope, he filed for a continuance . . . A delay . . . Per the rules, he got an additional 30 days to file his opposition.

So, we wait . . .

At the end of the thirty days, he files again. Did he file his opposition so we could answer and get this thing moving towards a resolution? Nope, he filed another continuance and got 60 days this time.

These delays were pretty frustrating. We could use the trademarks, but couldn't really claim them as our own. We believe that was the other side's intention all along. To delay and irritate.

During this time, they offered us a settlement that was completely insulting. We declined and continued to wait.

Fortune rewards the patient . . . .

At the end of the sixty days [90 days total - 120 if you count the 30 we waited during publication], Jay's attorney let all three filing deadlines expire . He made a half-hearted attempt to get more time on JWA, but was denied and told that they had no additional remedies. We believe he didn't file the oppositions because he didn't have the necessary grounds.

As a result, American Plastic has given up all rights to oppose our registrations at the federal level. The time for anyone else to step up and try and oppose us has passed. These trademarks will mature into registrations [ya know, the 'R' inside the circle] after the paperwork finishes getting through the federal maze.

As a result,

Circle X Ranch [TM]
Johnny West Adventure [TM]
Best Of The West [TM]

are trademarks of Toytrackerz LLC. That's Noah and I.

One of the responsibilities of trademark ownership is that you have to police how the marks are used. As a result, we have had eBay and CafePress listings removed for someone who makes reproduction boxes, t-shirts and posters bearing the JWA logo. Failure to do so could result in damage to our trademark rights. It was a business decision and a legal decision and I would do it again tomorrow and will continue to do so.

I want to remind people who started this fight. It wasn't us. Instead of contacting us and discussing an amicable resolution, they sent us the Cease & Desist letter. We also received copies of emails and messages that our opponents were saying things like 'we were headed for a brick wall' and 'we would be brought down'.

Well . . . I'm not going to cooperate by ceasing, desisting and so far every brick has bounced off of us like it was made of foam rubber. A law review article put it best, 'Be careful when you send a Cease & Desist letter . . . it could be you that is made to stop'.

More later - Terri

And So We Waited . . . #3

Post #3

After we served the lawsuit, American Plastic had 30 days to file a response. We waited and we waited. On the 28th day, we got a phone call from an attorney in Kansas City saying he had entered the case on behalf of Jay Horowitz and APE.

Enter Jan P. Helder Jr. . . .

But more about why that's important later . . .

Noah took the message and agreed for him to call back later. In the interim, I got on Google and learned a few things about my opponent. In an odd twist of fate, it turned out we had come from the same hometown. No big deal, until you realize we were both born in Marysville, California! Even turns out we went to the same elementary school, I was about 3-4 years ahead of him.

Trivia aside, there were two important things that came out of the phone call.

1. He'd filed a notice to remove the case to federal court. An annoyance, but not a fatality. I didn't particularly appreciate his statement 'You are registered to practice in Federal Court . . . aren't you?' Oh pleeeeeze . . . . That was my first indication that my advesary didn't take me seriously.

2. Second, he wanted to know if I would consent to a continuance in time for him to file his paperwork. I consented because it is the polite thing to do when a new attorney enters a case. Little did I know that filing for endless continuances would be his primary strategy.


Saturday, July 15, 2006

Toytrackerz Declares Itself . . . #2

Post #2

After talking it over with our lawyer, I decided to file a 'Declaratory Judgment' action in Kansas state court. This type of action, in a nutshell, is to ask a judge to decide the dispute as to whether or not we were infringing on any protected rights held by APE.

A Declaratory Judgment is sort of backwards from a typical lawsuit. Usually, you go to court and say someone did you wrong. [Ya know, 'You got your peanut butter in my chocolate]. In a Dec Judgment, you ask the judge to rule that you HAVEN'T done anything wrong. This is a common lawsuit after when someone sends a Cease & Desist letter.

I served the original petition with a summons on APE via their registered agent right after the first of the year.

On the day the lawsuit was served, all of our eBay auctions were pulled by someone calling themselves ''

On that same morning [January 9th I do believe], the Circle X Ranch and Trading Post sites on Yahoo! went dark for several hours. I don't have proof, but I believe the same people tried to bring our sites down. Yahoo! has a high standard of proof required for intellectual property violations and I don't think they met the standard.

That same morning, I got a Restraining Order from the judge preventing interference with our internet businesses during the pendency of the case.

Terri Coop

PS: I intend to make all the public record legal documents available when I figure out how to make .pdf hotlinks.

It All Began With An Email . . . #1

Post #1

Greetings to everyone. I appreciate you taking the time to look over this blog and to hear our side of the current litigation between our company, Toytrackerz LLC, [TT] and American Plastic Equipment, Inc. [APE]. You may know us better as Noah and Terri of The Circle X Ranch, but our 'official' company is Toytrackerz LLC.

This blog is to give our side of the story. There is a mass of info flying around via email and back channels - we have found most of it to be incorrect. Comments to this blog are allowed, but you have to identify yourself [no 'anonymous' posts] and the comments will be reviewed and moderated. You can also email me directly with your questions.

Now . . . onto our tale . . .

The story begins well before this time, but the chain of events that led to the current lawsuit started on December 3, 2005 when we received a 'Cease & Desist' letter signed by Jay Horowitz on behalf of APE. He claimed that APE unequivocable rights and ownership of the trademarks - Marx, Johnny West, Johnny West Adventure, Best of the West, Fort Apache, Circle X Ranch and objected to even Noah's use of the nickname 'marxman'.

If you've never seen a Cease & Desist letter before, most contain the same bristling, saber-rattling language threatening dire consequences if you continue to violate what they are claiming as their property rights.

However, when you remove the hyperbole, you are left with the basics. It's a letter. As you all know, you can say whatever you want in an email and it is just electronic noise. Unless it is signed by a judge, it has no force of law.

A C&D letter is just a warning and a threat - like a drunk telling you they are going to kick your a$$ if you don't give them the peanut bowl. It can be taken as warning - hey, the drunk may actually kick your a$$, but it is not a legal requirement that you give up the peanuts.

When you receive a Cease & Desist letter, you have three choices: You can indeed cease & desist, you can ignore it and let the consequences fall where they may, or you can take the fight back to the source and say 'I don't think so . . . . '.

So, upon receipt of this email, I did what anyone should do, I consulted a lawyer to determine which of these three choices was right for us.

Buy, hey, I'm a lawyer - right??

Yes, I am. However, I don't try and claim expertise in all areas of the law. I practice primarily criminal law - not intellectual property. So, I found a firm that specializes in intellectual property and asked for advice.

Cease & Desist letters come in two forms:

a) Measured and Reasonable: These letters assume people are responsible businessmen who have, perhaps unknowingly, infringed on another's rights. Similar to politely telling your neighbor that they have crossed your property line, a well-written C&D letter provides notice without being obnoxious [ya know, the difference between 'Please pass the peanuts, that is my bowl' and 'Give me my #$%^ing peanuts or I'll rip your head off'.] This type of letter usually invites you to enter into a conversation about the writer's concerns and leaves open the possibility of a fair and friendly resolution.

b) Obnoxious and Threatening: This type of C&D letter acts like you are a criminal that has the character and IQ of a rabid hyena that is peeing on the carpet. It bristles with threats of the dire consequences if you don't immediately cease your every activity, including, but not limited to, even thinking about the contested trademark. This type of letter leaves no option for negotiation and often tells you to sit and wait quietly until you receive your next set of orders. A common catch phrase in a 'Type B' letter is 'GOVERN YOURSELVES ACCORDINGLY'.

Our letter was definitely of the 'Type B' variety.

So, an issue that could have most likely been resolved with either a 'Type A' letter or better yet, a phone call, escalated to the next level. . . .

Terri Coop