Thanks @namecast , we appreciate the support!
2 karma · joined May 12, 2015
To protect a mark, you have to do more than file a registration and buy a domain. You have to actually use it "in commerce" which is a rather stringent legal standard that changes on a per industry basis.
It isn't clear that he is actually has been "using" the name in the manner required by trademark law, and you can't just have "token use" and keep a TM forever. It doesn't seem like any products are actually for sale under his mark, and it isn't being marketed, so it seems like he isn't using it "in commerce" in the way that TM law requires.
Second, if you search the TM database there are approximately 40 registered names with "Case" in it, in the area of legal software; ergo it is a very common term in the legal software field. The standard for TM infringement is "likelihood of confusion", in other words, is a typical consumer going to be confused about the origin of the software.
Even IF his marks were being used in a way which satisfied the "use in commerce" test, with all those Case* names out there there is no likelihood of confusion. In other words, if a consumer of legal software services is looking for his Case* mark, they are not going to be confused by the other 40 Case* marks, because consumers of legal services know that "Case" is a common term in the field and not all products named "Case*" are owned by the same person.
Ars Technica has a story now about a trademark attorney claiming he owns "case formative" marks ( including CaseRails )
http://arstechnica.com/tech-policy/2015/05/trademark-lawyer-...
I see that my colleague from Contractually (bmulholland) gave a good answer and I agree with his sentiments.
I would add that, in a broad sense, there are probably three hypothetical markets for a law startup (defined as, something to do with legal services):
1 - you could provide legal services to consumers of legal services,
2 - you could displace legal services with something else, or
3 - you could sell something, or provide another service to, the people providing legal services.
CaseRails is an example of #3, our product is intended for lawyers themselves to use.
There aren't any examples of #1 (that I know of) because, at least in the USA, ethical regulations prohibit fee splitting with non lawyers. This means you can't have non-lawyer shareholders / investors; which means you can't raise capital in the traditional markets.
LegalZoom and RocketLawyer are good examples of #2, they try to displace your need to call a lawyer with an online service where you can get document templates. (I don't want to speak for Contractually but they might also be in this category)