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Trademark Trial and Appeal Board Suspends SLART Cancellation Proceeding Until District Case Decided

October 9th, 2008 by Benjamin Duranske

Second Life creator Linden Lab’s attempt to open a second front in the battle over SLART has been stymied.  The USPTO Trademark Trial and Appeal Board suspended (.pdf) the cancellation proceeding that Linden Lab initaited last month regarding artist Richard Minsky’s registration of “SLART” pending the outcome of the lawsuit Minsky filed earlier in Federal court against an avatar named as an individual alleged infringer, Linden Lab, and Linden Lab executives.  Minsky asked the Trademark Trial and Appeal Board for the suspension and Linden Lab opposed it.  The suspension was granted following a telephone conference.

The TTAB explains: “To the extent that a civil action in a Federal district court involves issues in common with those in a  proceeding before the Board, the decision of the district court is binding upon the Board, while the decision of the Board is not binding upon the court. See, e.g., Goya Foods Inc. v. Tropicana Products Inc., 846 F.2d 848, 6 USPQ2d 1950 (2d Cir. 1988).”

Because Minsky “must establish that he has protectable trademark rights in the involved SLART mark” in the district court proceeding, and because “the district court’s findings with regard to whether [Minsky] has such rights may have a bearing” on Linden Lab’s claim that Minsky committed fraud on the trademark office in acquiring the registration, the Board suspended the cancellation until the district court action is concluded.

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Posted in Lawsuits, Linden Lab, Minsky v. Linden Lab, Providers, SLART Cancellation, Second Life, Trademark Law, Virtual Law, Virtual Worlds & Games |


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7 Responses to “Trademark Trial and Appeal Board Suspends SLART Cancellation Proceeding Until District Case Decided”

  1. on 09 Oct 2008 at 11:28 am1 Doubledown Tandino

    this all is just getting me more and more confused… not about the case… but about the government and laws

    battling over 5 letters…

    I’d even give Minsky some sort of leg to stand on if “SLART” was actually in a logo form… but just trying to take away free reign to use 5 letters… hmmm… i just disagree with the concept, even if it is law….

    The guy that wrote the alphabet song isnt suing the guy that wrote the twinkle twinkle little star song.

    Gay people don’t sue straight people for uses of a rainbow.

    Nike doesn’t sue everyone that writes a checkmark.

  2. on 09 Oct 2008 at 11:40 am2 Benjamin Duranske

    One thing that makes it a little easier to understand, I think, is that trademarks like this only apply to a class of products or services.

    Minsky’s registration of SLART, for example, pertains to:

    Multimedia publishing of books, magazines, journals, software, games, music, and electronic publications; On-line publication of art; Publication of electronic magazines; Publication of electronic newspapers accessible via a global computer network; Publication of the editorial content of sites accessible via a global computer network; Publishing of electronic publications; Art exhibitions; Conducting workshops and seminars in art; Instruction in the field of art; Workshops and seminars in the field of art; Publication and editing of printed matter; Publication of books; Publication of books, magazines, almanacs and journals; Publication of books, of magazines, of journals, of newspapers, of periodicals, of catalogs, of brochures; Publication of books, reviews; Publication of brochures; Publication of documents in the field of training, science, public law and social affairs; Publication of journals; Publication of leaflets; Publication of magazines; Publication of manuals; Publication of musical texts; Publication of printed matter; Publication of text books; Publication of texts, books, journals; Publication of texts, books, magazines and other printed matter; Education in the field of art rendered through correspondence courses; Education in the field of art rendered through video conference; Educational services in the nature of art schools; Organizing community festivals featuring a variety of activities, namely, sporting events, art exhibitions, flea markets, ethnic dances and the like.

    http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=77137283

    Okay… so actually SLART’s maybe not the best example of limiting one of these narrowly, but it’s not like you couldn’t use “SLART” for something totally unrelated, like a line of hats.

    Here’s another example, from General Motors registration for “GM”

    AUTOMOBILES, MOTOR TRUCKS, TRUCK TRACTORS, BUSES, AND PARTS THEREOF.

    http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=72295402

  3. on 09 Oct 2008 at 12:23 pm3 Michael Donnelly

    Did Mr. Minsky include any dictionary references to prostitution or flatulence in his correspondence with the Board? It’s important to be consistent with the court filings, you know…

    My apologies for the off-color humor, but it’s too easy of a target to pass up.

  4. on 09 Oct 2008 at 1:11 pm4 Benjamin Duranske

    @3 – Not in this one. Notably (though not necessarily related) Mr. Minsky is represented by counsel in the matter before the USPTO, which he is not, at least at the moment, in the district court action.

  5. on 09 Oct 2008 at 1:38 pm5 Richard Minsky

    @1 There are different kinds of trademarks. Logos are one form of trademark, but this is called a Standard Character Mark. It has to do with commercial use of the term, so consumers will know the source of the goods or services.

    Many common words have been adopted as standard character marks. Although it was in use for over 2,000 years, the American Olympic Committee owns the trademark OLYMPIC as a standard character mark, besides the logos.

    There is a 30 day period during which people can file opposition to a trademark, and nobody opposed my application for the SLART trademark.

    Linden Research, Inc. is applying for several standard character trademarks, including SL and SECOND, and they are in their opposition period right now, until October 16. There is a link above under “Related Posts in Virtually Blind” to Ben’s story on that.

    @2 It’s not really as many uses as it seems. This is the first trademark application I ever did. It was online, and it said to choose categories from a list that you click on. A lot of them repeat the same thing in different ways, like you see “Publication of Books” over and over. And there are things that duplicate it in different ways, like “Publication of Printed Matter.”

    Later I learned that I could have written my own description and it would not have been so repetitious.

    @3 No apologies necessary. Slart is a funny word, and makes people smile. That’s one of the reasons I chose it.

  6. on 09 Oct 2008 at 8:21 pm6 Doubledown Tandino

    So, if i create a new style of artform, it’s a conseptual form off art… on the streets of the art community, people know I’m totaly drunk…. that’s why they call my art slurred art… aka SLART…..
    would I hear from minsky’s lawyers in this instance?

  7. on 12 Oct 2008 at 9:37 pm7 Raver Xeno

    This guy is totally nutz… He is going to have to be very wealthy to afford all of this litigation….
    I foresee many lawsuits in the future on this subject and I am no psychic.
    Doesn’t he infringe on The term SL (If my memory serves me correctly that is still in the works)
    anyways it will be interesting to see how this develops.

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