TRIALGRAPHIX VS. THE GRAPHIC WITNESS
TrialGraphix says it "coined"
MIAMI, Nov. 2, 1998 - TrialGraphix Inc. says the phrase "trial graphics" was not used to describe trial graphics until they thought it up in 1991 and turned it into their trademark.
However The Graphic Witness Inc. has found documents in which the phrase was used years earlier -- in some cases by District Court judges.
TrialGraphix's claim is contained in papers filed in U.S. District Court Nov. 2. The company is suing The Graphic Witness of Fort Lauderdale for trademark infringement for using the phrase "trial graphics" on a single page in its web site, www.graphicwitness.com.
"Until [TrialGraphix] coined the term [in 1991], neither [TrialGraphix] nor its competitors nor its customers referred to demonstrative trial exhibits as 'trial graphics' or any derivation thereof. The term 'trial graphics' does not, without the aid of some imagination and indirect suggestion, lead one to think of demonstrative trial exhibits," TrialGraphix says. FULL TEXT
To support this claim, they point to the ads of competitors in the Yellow Pages and note that none of them use the phrase.
In 1988, however, a U.S. District Court judge in Washington, D.C. used the phrase at least 10 times in a single decision. The judge refers to "the enormous value and evidentiary significance of demonstrative evidence such as trial graphics." This is just one of the examples of pre-1991 use that have been found by The Graphic Witness' attorney, Kevin P. Crosby of Malin, Haley, DiMaggio and Crosby in Fort Lauderdale. [Robertson v. McCloskey, U.S. District Court for the District of Columbia, CA86-2877]
In October, U.S. District Court Judge Edward B. Davis denied TrialGraphix's motion for a temporary restraining order to stop The Graphic Witness from using the words. The judge said the phrase in the web site looks nothing like the TrialGraphix logo.
However TrialGraphix says in its latest filing that the phrase is "phonetically identical" to their trademark and is therefore an infringement.
They further argue that allowing the use of the phrase "trial graphics" would be like allowing competitors of Yamaha's "Wave Runner" to use the misspelled, lower case phrase "wave runer" because water scooters are vehicles that run waves.
TrialGraphix is asking for reconsideration of their motion for a temporary restraining order. [That request was denied Dec. 1, 1999. See ruling.]
The Graphic Witness is attempting to have TrialGraphix's trademark registration declared invalid. It contends that "trial graphics" is a generic, descriptive phrase, and says that fact was not disclosed to the Patent and Trademark Office (PTO) examiner.
TrialGraphix denies those allegations and says the PTO did not require the disclosure. It is asking for a dismissal of the challenge.