INTA Daily News

The Rocky Road to Court

About 1,000 attendees gathered in the Marriott Marquis Ballroom to follow a case through trial on March 3, 4 and 5, 2004.  The three-part session, which dealt with litigation techniques, followed a fictional case regarding infringement of the "Groceries and More" trademark. 

The session, moderated by Bruce W. Baber of King & Spalding and Theodore A. Breiner of Breiner & Breiner, saw Sally M Abel of Fenwick & West advise her client Trump Albertson, played by Bruce P. Keller of Debevoise & Plimpton, on the merits of pursuing legal action against a perceived infringer. Albertson was angry because he believed an Atlanta grocery store was infringing his “Groceries And More” trademark. 

The fictional defendant, local Atlanta merchant Rhett Scarlett, played by Philip G. Hampton of Gardner, Carton & Douglas, was advised by Janet Dore of Morgan & Finnegan. Scarlett denied that he was infringing, claiming that he had been using his store’s “Not Just Groceries” name since 1994. 

As the role play progressed, it was apparent that both sides had strong arguments. 

Albertson’s “Groceries and More” mark was nationally recognized, not only successful, but also famous for the novel design of his stores, with products delivered to customers through chutes. Scarlett’s “Not Just Groceries” stores copied the basic idea – goods delivered through chutes – and his store only opened after Albertson rejected his request to open a “Groceries and More” franchise in Atlanta. Albertson also complained of receiving bills for inventory delivered to Scarlett’s store, while some shoppers had tried to use “Groceries and More” coupons and shopper cards at “Not Just Groceries.”

Abel advised Albertson to send a cease-and-desist letter, while leaving the door open to preliminary injunction proceedings.

On receiving Albertson’s letter, Scarlett was equally adamant that he was the injured party. Despite not using the “Not Just Groceries” mark until late 2003, he had registered it in 1997. And aside from the merits of his own case, Scarlett has the advantage of being a defendant in a trademark case. As Dore pointed out to Scarlett, in such cases the burden of proof is on the plaintiff. “That means that he has to prove that you infringe some protectable right that he has; you don’t have to prove that you don’t,” she said. 

After failed settlement talks, both sides decided to go on the offensive. Abel advised Albertson to file for a preliminary injunction, while Dore and Scarlett chose to seek a declaratory judgment. In both instances, the parties were looking for a quick kill to end the dispute. But such a strategy is not without its risks, with Abel warning Albertson that he could suffer an early loss, and Dore telling Scarlett that by starting a declaratory judgment proceeding he was exposing himself to a full lawsuit. 

Afterwards, the panelists gave their insights on the events. Abel said that by seeking declaratory judgments when a preliminary judgment or lawsuit is imminent, defendants can make plaintiffs more willing to talk and settle by showing that they are serious about litigation. Keller recommended that plaintiffs send a follow-up demand letter that cited the first letter and the defendants failure to act on the demand. “It creates atmospherics, and can help make the defendant look like a bad actor,” he said.

Judge Urges Settlement in Role Play

The second session in INTA’s unique experiment iwas held on May 4, with a local district court judge presiding over preliminary stages of legal proceedings.

The Honorable Thomas W. Thrash Jr. joined the role play as himself, holding a conference between the lawyers of the fictional characters involved in a trademark dispute.

Parker H. Bagley of Milbank Tweed Hadley & McCloy represented the character Rhett Scarlett, who was played again by Philip Hampton of Gardner Carton & Douglas. Scarlett was accused of infringement by store owner Trump Albertson, played on Monday by Bruce P. Keller. Acting for the Albertson character was D. Peter Harvey of Harvey Siskind Jacobs.

At the first conference, Judge Thrash ordered the lawyers to bring their clients together to seek a settlement. “It is my experience that the longer these things go on, the harder they are to resolve,” he said. 

Judge Thrash also highlighted the stakes involved for the two parties: “If I rule for “Groceries and More,” Mr. Scarlett would effectively go out of business.” By ruling in favor of “Groceries and More”, Judge Thrash said that he could be ending the company’s chances of success in the Atlanta region. 

Spiky exchanges between Scarlett and Albertson’s wife Yvonne, played by Sally M. Abel of Fenwick & West, at the settlement talks kept both sides apart. This was despite Bagley prodding Scarlett to try to reach a compromise by encouraging him to “think about the worst-case scenario when you’re involved in settlement negotiations.”

The session concluded with Bagley and Harvey again in conference with Judge Thrash, setting the schedule for preliminary injunction hearings. 

The third and final session, on May 5, 2004, featured a role playing panel that included appeals court judge Hon. Stanley F. Birch presiding over the mock court hearing.



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