Big's counterclaim makes it clear that, if Small filed for declaratory judgment to facilitate the possibility of settlement and to avoid the all-out war of an injunctive proceeding, its hopes were unfounded. Additionally, the counterclaim goes further by adding Cpaatty to the mix, with Big seeking everything from Cpaatty personally that it seeks from Small.

In short, the counterclaim seeks everything and is accompanied by a request that the court require fast-track discovery ("discovery" means measures taken by one party to require the other party to disclose virtually every aspect of the other parties case, including interrogatories (questions asked which must be answered), requests for production (requiring a party to produce copies of all documents pertinent to the case), requests for admission (requiring a party to admit or deny certain key matters, upon penalty of having to pay the other parties costs to prove those key matters if the key matters are denied), and depositions (requiring a party to appear and be cross-examined, in effect, under oath). (we will get into this subject shortly).

Like a complaint, the counterclaim needs to set forth those facts which establish the court's jurisdiction and sufficient facts to identify the parties, and recite the pertinent facts which the counterclaimant (Big) alleges justify relief. In the counterclaim, Big turns its size into a virtue and characterizes Small as seeking to ride on Big's coattails. It first ignores, then downplays, the Cpaatty trademark registration and alleges that it has only recently discovered the existence of Small and Cpaatty. In contrast to the polite approach adopted by Small in the complaint, Big pulls no punches and accuses Small of using devious tactics to divert business from Big to Small.

For those unfamiliar with legal proceedings, lawyers for the litigants normally adopt a recitation of the facts which puts the client in the most favorable light, garnish that recitation with matters which disparage the opposition, downplay (or ignore) those facts which favor the opposition, and then try, in every way possible, to bring that simplified story to the attention of the judge. Every litigant hopes to get the judge in a position where the judge believes the litigant and doubts the opposition, in the hope that a pattern of judge-think will develop which will doom the other side's possibilities of success at the earliest possible moment.

An example of this approach is the way Big deals with Small's emphasis upon priority of registration. Fairly far into the narrative, that priority is acknowledged (note the use of the word "apparently") and then discarded as being of no significance, with Big emphasizing its use of TaxHQ for the newsletter, which admittedly predated the use of TaxHQ by Small. The contact between Cpaatty and Big on Nov. 1, 2004 is dismissed as inconsequential, other than to show that Small and Cpaatty knew that Big had been using the term TaxHQ as the name of its newsletter for some period of time.

Neither is Big concerned about the reaction of Small and Cpaatty in stating the relief it seeks: that Small and Cpaatty be enjoined from using the term TaxHQ, that Small and Cpaatty be required to pay Big any profits realized as result of the use of the mark, that those damages be trebled because of the willful conduct of Small and Cpaatty, and that Small and Cpaatty be required to pay Big's attorneys fees.

The last few paragraphs should not be interpreted to say that Big is acting improperly in the position it has taken, that its comments are unjustified, or that Big is overplaying its hand. Rather, they are intended to say that Big has made it clear that it intends to pursue the matter aggressively and adopt the "all-out war" approach commonly used in trademark litigation. Judges are used to aggressive allegations and having been lawyers themselves, tend to be forgiving of allegations previously made which remain unproven, recognizing the truth of the paragraph above starting with "For those unfamiliar...". It must be added, however, that the lawyers must nevertheless be careful not to overstep their eventual proof, since there is an ill-defined line beyond which you dare not tread if you want to avoid judicial displeasure. Look at the preliminary injunction motion and memo next. Home       TM Overview       TM Case Index

(c) Copyright 2010-2014 Milliken PLC