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Arkansas Lottery sued for trademark infringement

Arkansas LotteryArkansas Lottery: Arkansas Lottery sued for trademark infringement
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LITTLE ROCK, Ark. — The Arkansas Scholarship Lottery is the target of a lawsuit by a man who claims he owns the trademark to names the state lottery is using.

Ed Dozier of Little Rock filed suit Thursday in Pulaski County Circuit Court, claiming that as far back as 1994 he secured the trademark to "Arkansas Lottery" and several other similar terms.

Dozier is asking a judge to order the state lottery to stop using the names.

The suit, filed by the Davidson Law Firm in Pulaski County Circuit Court, seeks a declaratory judgement to enforce Dozier's company's "exclusive right to use its registered trademarks 'Arkansas lottery', 'Arkansas lotto', and 'Lottery Arkansas.'"

The lawsuit was filed against the state and the Arkansas Lottery Commission. The Arkansas lottery officially is titled, the "Arkansas Scholarship Lottery."

In a statement, Dozier's law firm said Dozier's company, Alpha Marketing, "registered and has been using the trademarks" since 1994, when he said he received certificates of trademark registration for the terms "Arkansas Lottery" and "Arkansas Lotto."

The firm also said Alpha began using "Lottery Arkansas" in 2007 and registered the trademark in February 2009.

The suit seeks a court order stopping the state and the lottery commission from "interfering with Alpha's exclusive use of these names."

The case has been assigned to Judge Ernest Sanders in the 5th Division.

Arkansas lottery director Ernie Passailaigue said Thursday that he hasn't seen the suit. Passailaigue says he'll let the lottery's attorney address the matter in court.

A PDF file containing the lawsuit and support documents can be found in the links below.

Lottery Post Staff

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11 comments. Last comment 7 years ago by KY Floyd.
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duckman's avatar - ducklogodrake64x64
Jacksonville Florida
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October 6, 2005
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Posted: March 18, 2010, 11:28 pm - IP Logged

It will be interesting to see how this plays out in court (or a pre-trial settlement).

Since trademark rights are created when the mark is used in commerce, I wonder what the original company's "product" or "service" was (which they must have to claim trademark rights)?

Since the Arkansas (state) Lottery is new, I suspect the attorneys for the lottery suggested calling the state lottery the "Arkansas Scholarship Lottery" in the hope that is was different enough from "Arkansas Lottery".

The key tests the court will have to decide are:

1)  if  "Arkansas Scholarship Lottery" creates a liklihood of confusion for "Arkansas Lottery" consumers.
2) are the products and services that both entities sell too similar

The company suing the state lottery may be positioning themself for a $$$ settlement...

    Avatar
    NY
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    Posted: March 19, 2010, 1:46 am - IP Logged

    My money says the guy is a trademark troll who's been squatting on those names while hoping for a nice payday when Arkansas started a lottery. I'm skeptical that the guy is actually doing any business that is likely to be confused with the state lottery. With "lotto" having been used as the name of lottery games for a lot longer than he claims to have been using it I'm extremely skeptical that he's got a legitimate business use for "Arkansas lotto" that would prevail in court. Getting a trademark is cheap, so he probably hasn't invested much and may figure the cost to the lottery of litigating makes them likely to settle, and that might be the sensible thing to do as a matter of cost. OTOH, assuming he doesn't have a good legitimate reason to be using those terms in a business where there might be any confusion I'd prefer to see the Arkansas lottery spend a few bucks and send him packing.

      Littleoldlady's avatar - basket
      Clarksville
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      Posted: March 19, 2010, 6:33 am - IP Logged

      My money says the guy is a trademark troll who's been squatting on those names while hoping for a nice payday when Arkansas started a lottery. I'm skeptical that the guy is actually doing any business that is likely to be confused with the state lottery. With "lotto" having been used as the name of lottery games for a lot longer than he claims to have been using it I'm extremely skeptical that he's got a legitimate business use for "Arkansas lotto" that would prevail in court. Getting a trademark is cheap, so he probably hasn't invested much and may figure the cost to the lottery of litigating makes them likely to settle, and that might be the sensible thing to do as a matter of cost. OTOH, assuming he doesn't have a good legitimate reason to be using those terms in a business where there might be any confusion I'd prefer to see the Arkansas lottery spend a few bucks and send him packing.

      I agree.  I remember when some were buying up the names of state lotteries in the hope that they would be able to cash in.  The one thing that most of them left out was the word "scholarship". I think it will get thrown out.

      If you know your number is going to hit, have patience and then KILL IT!

      You never know when you will get another hit.

        Todd's avatar - Cylon 2.gif
        Chief Bottle Washer
        New Jersey
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        May 31, 2000
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        Posted: March 19, 2010, 8:22 am - IP Logged

        My money says the guy is a trademark troll who's been squatting on those names while hoping for a nice payday when Arkansas started a lottery. I'm skeptical that the guy is actually doing any business that is likely to be confused with the state lottery. With "lotto" having been used as the name of lottery games for a lot longer than he claims to have been using it I'm extremely skeptical that he's got a legitimate business use for "Arkansas lotto" that would prevail in court. Getting a trademark is cheap, so he probably hasn't invested much and may figure the cost to the lottery of litigating makes them likely to settle, and that might be the sensible thing to do as a matter of cost. OTOH, assuming he doesn't have a good legitimate reason to be using those terms in a business where there might be any confusion I'd prefer to see the Arkansas lottery spend a few bucks and send him packing.

        That was my first thought too, but if you read the court documents and supporting documentation, you'll see he was actively engaged in promoting various merchandise using "Arkansas Lottery" on it.  Such as T-shirts with cute little phrases on them that include the name "Arkansas Lottery".

        If he's a trademark troll, then he's a very smart one.  Troll or not, I think he has a pretty good case, although the lottery might get away with doing nothing because they use "Arkansas Scholarship Lottery" as their official name.  Even their logo has that full name in it. 

        So if I were to assign odds, I would say the highest probability is that nothing changes.  The guy keeps his trademarks, and the lottery has not violated them.  Of course, the lottery could pay him off to get rid of the problem, but they tend to be stingy with that kind of thing.

         

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          CARBOB's avatar - FL LOTTERY_LOGO.png
          ORLANDO, FLORIDA
          United States
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          June 3, 2004
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          Posted: March 19, 2010, 9:05 am - IP Logged

          My money says the guy is a trademark troll who's been squatting on those names while hoping for a nice payday when Arkansas started a lottery. I'm skeptical that the guy is actually doing any business that is likely to be confused with the state lottery. With "lotto" having been used as the name of lottery games for a lot longer than he claims to have been using it I'm extremely skeptical that he's got a legitimate business use for "Arkansas lotto" that would prevail in court. Getting a trademark is cheap, so he probably hasn't invested much and may figure the cost to the lottery of litigating makes them likely to settle, and that might be the sensible thing to do as a matter of cost. OTOH, assuming he doesn't have a good legitimate reason to be using those terms in a business where there might be any confusion I'd prefer to see the Arkansas lottery spend a few bucks and send him packing.

          I'm not an attorney, but I was always under the impression that an individual could not use any type of advertising or marketing anything that included the state name without the state authorization. What I'm saying is no one but the state owns the the trademark "Arkansas Lottery", I maybe wrong, but I will bet that he will lose in any court of law.

            Raven62's avatar - binary
            New Jersey
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            Posted: March 19, 2010, 9:07 am - IP Logged

            The State of Arkansas could exercise eminent domain (the right or power of the state to take or control private property for public use) and the plaintiff would be out of Luck!

            A mind once stretched by a new idea never returns to its original dimensions!

              CARBOB's avatar - FL LOTTERY_LOGO.png
              ORLANDO, FLORIDA
              United States
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              Posted: March 19, 2010, 10:26 am - IP Logged

              Thanks Raven, I was trying to remember the term," Eminent Domain", but couldn't. Before I retired , I did a lot of surveying that involved "Eminent Domain",  around Florida. I've seen cases where a person lost the business. Even tho they were compensated, financially. I didn't think it was completely fair. A lot of the businesses were small "neighborhood" types, and couldn't be relocated.There were many cases the state's offer was below fair market vaue and that caused a lot of mitigation.

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                NY
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                October 16, 2005
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                Posted: March 19, 2010, 3:40 pm - IP Logged

                I'm not an attorney, but I was always under the impression that an individual could not use any type of advertising or marketing anything that included the state name without the state authorization. What I'm saying is no one but the state owns the the trademark "Arkansas Lottery", I maybe wrong, but I will bet that he will lose in any court of law.

                Other than uses that would actually be fraudulent or deceptive advertising, anybody is free to use the state name. It's really no different than using any other geographic description, such as Main Street Cleaners. Since he was using the terms before there was an Arkansas lottery it's very unlikely that any of his uses could be considered fraudulent or deceptive.

                I'm not going to bother to read the court papers, I consider most of the material to be nothing more than spin from his lawyer. I did find this on the web though:
                http://www.arktimes.com/blogs/arkansasblog/2010/03/cashing_in_on_the_lottery.aspx

                Perhaps he marketed something else, but it refers to a shirt that says "Arkansas Lottery: My new 401K retirement plan." I see no conflict with the actual lottery in that, and it doesn't require any protection for "Arkansas Lottery" by itself. The article also notes that he acquired the trademark about the time Arkansas voters considerd an amendment about gambling, which can easily be seen as suggesting that a lottery could come along. I've still got a hard time seeing the terms as legitimate trademarks, and I think the timing  says trademark troll. I'll also note that the phrase is somewhat meaningless unless there actually is an Arkansas lottery.

                As for eminent domain, that's a very complicated legal area when applied to intellectual property, as opposed to tangible physical property. Other than the possibility of the state's sovereign immunity it's probably a moot point, as the government has to pay for property taken under eminent domain. Assuming the guy is looking for a payday, he shouldn't mind having the trademark seized under eminent domain as long as he's compensated. If he and the state don't agree on compensation it will be decided by the courts, so it doesn't really matter whether the court is ruling on eminent domain or trademark issues.

                If that does happen, a value has to be assigned to his trademark, and I see any confusion as working against him.  No matter what the Arkansas lottery calls itself, people are going to connect "Arkansas Lottery" and "Arkansas Lotto" with the state lottery, and nobody is going to see "Arkansas Scholarship Lottery" and think it refers to this guy's company or products. Unless the lottery tries to prevent him from continuing to market his shirts I'd say the practical value of his trademark is zero.


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                  Posted: March 19, 2010, 5:44 pm - IP Logged

                  The man did some things right, and missed a couple of things also. Since he did actually use the trademark in a business fashion within a year of registration, he made the correct move there. However, most trademarks are protected unless there is a more than 15% difference and there is no direct business conflict. From two words to three words is what, a 33.33% change? And t-shirts and lottery tickets are in two totally different catagories.

                  Just a little off-subject, but the same type of rules should apply for patents. Use them or lose them. Then no hundred-million-dollar lawsuits when another individual or company independently discovers the same thing someone else did that just sat on it waiting for another to do the hard work of implementing and using the idea. RIM (Blackberry) anyone?

                    Hermanus104's avatar - 5027340606 1e360c8038_s.jpg
                    Northern Virginia
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                    Posted: March 19, 2010, 11:23 pm - IP Logged

                    That was my first thought too, but if you read the court documents and supporting documentation, you'll see he was actively engaged in promoting various merchandise using "Arkansas Lottery" on it.  Such as T-shirts with cute little phrases on them that include the name "Arkansas Lottery".

                    If he's a trademark troll, then he's a very smart one.  Troll or not, I think he has a pretty good case, although the lottery might get away with doing nothing because they use "Arkansas Scholarship Lottery" as their official name.  Even their logo has that full name in it. 

                    So if I were to assign odds, I would say the highest probability is that nothing changes.  The guy keeps his trademarks, and the lottery has not violated them.  Of course, the lottery could pay him off to get rid of the problem, but they tend to be stingy with that kind of thing.

                    That sounds like a great idea! Why not let Mr. Dozier make products for the Arkansas Lottery? It would be a win-win situation! (No pun intended.)

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                      NY
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                      Posted: March 20, 2010, 3:38 am - IP Logged

                      "Why not let Mr. Dozier make products for the Arkansas Lottery?"

                      Becauss he shouldn't be rewarded for being a troll. I see no problem with  letting him continue to use most of his trademarks and market the same shirts, but any right to market products which might be confused with official lottery merchandise should be limited to any existing products.

                      After my previous post I saw this:
                      http://www.arktimes.com/blogs/arkansasblog/2009/03/who_owns_the_arkansas_lottery.aspx

                      The page that site links to has been changed, but the screen capture shows that the guy got a trademark on "Arkansas Powerball". Since Powerball was already a trademark of MUSL's powerball game it seems to me that claiming infringement by the Arkansas Scholarship Lottery requires him to admit to infringing on PB's trademark.