Have We Lawyers Genericized “Bates” Numbers?

We lawyers are enamored with the phrase “Bates numbers” – however, even if “enamored” is too exaggerated, you must agree that lawyers use that phrase a lot, especially when talking about documents produced during litigation. It generally refers to the sequential numbering applied to documents exchanged between parties during a lawsuit. See generally, “Bates numbering” on Wikipedia; see also Masters, “Acrobat, The Solo and Small Firm Litigation Tool,” ABA’s GP Solo Magazine, June 2010, ¶¶ 10-13.

So, if one party produces documents to another during litigation, every page of those documents probably bears a unique, sequential number to enable consistent and uniform identification of a particular document referenced during the lawsuit. For instance, if Defendant produces a five-page memo bearing a 2005 date, the lawyers for both parties would argue about whether it should be characterized as the “2005 memo” or the “2005 admission that Defendant was negligent.” A far less argumentative way to identify that document accurately is by its sequential page number (a.k.a. the “Bates” number). Thus, both parties can agree that the document is D1234-D1239 and then move on to their substantive arguments.

How did these page numbers start being referred to as “Bates” numbers – and why do lawyers still call them that? I don’t claim to have all of the answers on this point, but after some digging, here’s what I’ve found:

In the late 1890s, the US Patent Office issued several patents to an individual inventor who later assigned them to the Bates Manufacturing Company for various devices that enabled the sequential numbering of paper. For example, you can find the following patent files through the U.S. Patent & Trademark Office:

  • U.S. Patent No. 484,389 for a consecutive-numbering machine, issued in 1892 to Edwin G. Bates
  • U.S. Patent No. 676,084 for an automatic numbering machine, issued in 1900 to Edwin G. Bates
  • U.S. Patent No. 676,082 for an automatic numbering machine, issued in 1901 to Edwin G. Bates

Note however, that some more recent patents refer to methods of assigning “Bates numbers” in a specific way and were issued to others:

  • U.S. Patent No. 5,960,448 issued in 1999 and assigned to Legal Video Services Inc.
  • U.S. Patent No. 7,103,602 issued in 2006 and assigned to Kroll Ontrack

Even though the patents have long since expired (patents are not valid forever), the trademarks remain valid, at least in connection with numbering machines.

The Bates Manufacturing Company also applied for – and was issued – registration of its trademark BATES (stylized) claiming a date of first use since 1891 for “numbering machines” in Class 09 (Reg. No. 158,174, renewed in 2002) and in Class 07 (Reg. No. 269,975, renewed in 2010). In fact, you can order one of these devices, which still bears this trademark, from sites like Amazon.com. (Note that Class 09 is also the class in which marks associated with software programs tend to be registered.) The company also owned trademark registrations in BATES for other products like ink pads and stapling supplies.

However, it appears that these trademarks may be of limited value because in undertaking the research for this article, I found many sites marketing software versions of “bates numbering” programs (e.g., http://www.bates-stamp.com/), or offering to sell their services to manage the “bates numbering” process for litigants (e.g., http://lsilegal.com/web/Solutions/TraditionalSvcs.aspx). It appears that the mark “Bates” as applied to automatic numbering systems may have become generic for a system of automatically applying sequential numbers to documents.

In this case, the trademark owner consistently applied its graphic label (which seems to be branded onto a metal plate) to the stampers themselves, by affixing it mechanically. Even today, the stampers seem to bear this label. (See e.g., the image of a stamping machine bearing the mark – click on “specimen” after reaching the Case File – as submitted to the U.S. Trademark Office in 2010 in support of an affidavit of continuing use). But, it apparently did not protect the mark (or the mark has lost its trademark value) in connection with sequential numbering systems or services to apply these types of numbers to documents, either in hard-copy or electronic form.

The lesson to be drawn from this – when you create a unique name for a product (or service) and begin to use it in commerce in connection with that product (or service), plan ahead for the possibility that the technology in which you began using the mark will evolve into something new. At the very least, recognize that as your industry matures, your trademarks may change, even if the products or services themselves remain the same as they were when they were first introduced. While it may be wonderful when your brand name becomes a household (or lawfirm-wide) word, mark owners need to police the use of their marks to keep the their value from being undermined.

Being vigilant means a mark can last forever. History is replete with examples of brand names that were not protected adequately by their owners and now are generic to identify products of that type. For example, Bayer failed to protect the name “aspirin” in the U.S., so anyone can use the mark “aspirin” in connection with their own brand of that medication in the U.S. without violating Bayer’s trademark rights. Bayer has successfully protected “ASPIRIN” worldwide (e.g., Canada, Reg. No. NFLD761, where the mark was registered in 1919) and it remains the exclusive property of Bayer.