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Stanford nail care didn’t get nailed. Neither did Stanford Floral Design, Stanford Cleaners or even the Stanford Driving School. But just before Sunnyvale, Calif.’s Stanford Microdevices Inc. held its initial public offering earlier this year, Stanford University pounced. The Palo Alto, Calif.-based university, which has served as the incubator for so many Silicon Valley high-technology companies, slapped Stanford Microdevices with a trademark infringement suit. Board of Trustees of the Leland Stanford Junior University v. Stanford Microdevices Inc., No. C-00-20297 — J W. The university’s acting general counsel, Debra Zumwalt, a partner in the Palo Alto office of Pillsbury, Madison & Sutro, acknowledges that Stanford selectively enforces its trademarks. “We haven’t gone after Stanford Cleaners because we don’t think anybody is confused,” she said. “The cleaners is right here in Palo Alto next to Stanford. They are not out there in a national market. People who take their laundry there don’t think Stanford is doing their laundry. And the cleaner is not trying to mislead anyone.” Eight-year-old Stanford Microdevices makes integrated circuits for the telecommunications industry. In the suit filed on March 17 in U.S. District Court in San Jose, the university charged that the company’s name might well lead customers to believe that there is a connection to Stanford’s electrical engineering department. The microdevice company is represented by Andrew Bridges, a partner at Palo Alto’s Wilson Sonsini Goodrich & Rosati. In an interesting twist, Pillsbury Madison’s William F. Abrams, who is the university’s lead counsel in this case, was Bridges’ dorm-mate at Stanford. Wilson Sonsini’s offices sit on Stanford-owned land, and Judge James W. Ware is a Stanford Law graduate, as is Zumwalt. Ware found that the microdevice company had “an intent to cause confusion” between the two entities, but he declined to issue an injunction at that time. He did, however, find it “interesting” that the Securities and Exchange Commission had not required a disclaimer of connection with the university in Stanford Microdevice’s IPO prospectuses. In response, Stanford filed a declaration from former SEC Commissioner Joseph A. Grundfest, the W.A. Franke Professor of Law and Business at Stanford Law School. Grundfest declared that “the absence of a request by the SEC that a company included a disclaimer, or any other cautionary language” in its filings, “does not mean that the SEC has affirmatively determined that such disclosure is unnecessary, or not required by law, or that prospectus is accurate as filed.” Zumwalt predicted that other universities active in technology licensing will be filing similar cases in the future. “There is tremendous value for a technology company to suggest to the public that there is a connection to an institution like Stanford,” she said. But, Stanford Microdevices presented a list of more than 1,000 companies with Stanford in their names. A number, such as 20-year-old Stanford Research Systems, of Sunnyvale, Calif., are involved in high technology, said Bridges. CRUCIAL TIMING Bridges said he’s angered that the university issued a press release announcing the suit — which had been filed several months earlier — on the day before his client’s May 26 IPO was priced. “I have enormous love and respect for Stanford,” he said. “But Stanford is choosing a path in a variety of ways that is testing the limits of my affection and loyalty.” Zumwalt acknowledged that the press release was timed for the IPO. “Stanford decided that if we couldn’t get the court to stop them, we would issue a press release,” she said.

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