Cobalt decided to post the letter, and their response to the C&D on their website… which they don't refer to as a "website" but rather as their "blog":
We are a law firm; and we are reporting news in our blog. Clearly is that stated under the category on ‘News’ as you acknowledge in paragraph two of your letter.The next part of the response is what caught my eye, and made me wonder if a calling something a "blog" as opposed to "website" allows for extra protection… in this case First Amendment protection under "Freedom of Speech?" It is also interesting that on Cobalt's on website, there is a disclaimer that calls the site a "website" … even at the bottom of the "News" page.
We acknowledge that your client has trademark rights. However, protection for trademark rights under the Lanham Act is limited to protection against another’s use of a designation to identify its business, or in marketing its goods or services in a way that causes a likelihood of confusion. Such trademark rights do not override First Amendment rights.Now, it has been 15 years since I took Intellectual Property classes in law school, but this seems to be a bit of a stretch in claiming that labeling a section of a website/blog as "News" allows for a law firm to use a company's trademark by claiming First Amendment protection.
Anyone think that Cobalt has a leg to stand on here? Can a law firm use a trademark logo when reporting on a case and claim that it falls into a safe haven against trademark rights because it is listed under their "News" section?
I'd like to see how this plays out… Maybe Durham, Jones & Pinegar will post their response on their website/blog, too!!