Earlier this year Leason Ellis LLP, an intellectual property law firm located in White Plains, New York, filed a complaint against USA Trademark Enterprises, Inc. of Sarasota, Florida, and its principals Timea Csikos and Andras Nemeth. The multi-count complaint alleged that USA Trademark Enterprises engaged in false advertising and unfair competition by marketing a catalog of trademark registrations, which offers no value because the published information is freely available in the online records of the U.S. Patent and Trademark Office. The complaint alleged that the defendants are further confusing consumers into thinking that the catalog is legitimate by sending unsolicited notices designed to make it appear as though USA Trademark Enterprises, Inc. is an official government enterprise or otherwise affiliated with any entity associated with the trademark registration process.
Yesterday Leason Ellis announced that the case has been resolved with the signing of a consent decree and Settlement Agreement. Without a doubt this can be characterized as nothing short of a complete and total victory. The judgment was entered by the Hon. Edgardo Ramos of the United States District Court for the Southern District of New York.
At the time the complaint was filed David Leason, Managing Partner of Leason Ellis, said “by targeting our clients and us, USA Trademark Enterprises has interfered in our business and cast a shadow over the legitimacy of trademark-related communications. In filing suit, we are out to protect our clients, our business, and the integrity of the trademark process from predatory and deceptive marketing.” Two words jump to mind — Mission accomplished!
Although USA Trademark denied wrongdoing or liability, the judgment permanently enjoins it from selling the catalog ever again again. It also bars the company from ever engaging in trademark or intellectual property-related activities in the United States. These folks are now out of the business entirely. A remedy you don’t often see in a private action. Indeed, the consent decree reads more like a consent decree you see as the result of an investigation and complaint filed by the Federal Trade Commission.
Here are four paragraphs from the consent decree:
Defendants warrant and represent that they made substantial sales and shipments of the Catalogue in the United States, including New York State, and have made good faith disclosure to Leason Ellis of financial records concerning such sales;
Defendants warrant and represent that, within fourteen (14) days of the Settlement Agreement separately entered into between Plaintiff and Defendants (the “Settlement Agreement”), they shall permanently discontinue marketing, selling, offering for sale, and distributing the Catalogue in the United States per the terms of the Settlement Agreement;
Defendants warrant and represent that, within fourteen (14) days of the Settlement Agreement, they shall never again conduct business in the United States in the field of trademarks or, more generally, in the field of intellectual property; and
USA Trademarks and its owners, officers, stockholders, employees, agents, servants, affiliates, subsidiaries, attorneys, and all other persons in active concert and participation with it, including Timea Csikos and Andras Nemeth, shall abide by the terms of this Consent Judgment.
They made “substantial sales,” which means they peddled their worthless services to many unsuspecting trademark owners and applicants. If this were a sporting event the crowd would be on their feet, hands waving, singing in unison “Wa- aaave Goodbye. Nah na na Nah. Wa- aaave Goodbye.” A total, unconditional surrender by USA Trademarks. GOOD! That is what they deserved.
According to Martin Schwimmer, lead attorney for Leason Ellis in the case, and author of the well-known Trademark Blog: “Our lawsuit and its successful outcome have shined a bright light on a disreputable practice which preys on unsuspecting trademark owners.” Schwimmer notes that since the lawsuit was filed, the USPTO has started sending trademark registrants warnings about trademark-related solicitations. The Office has also even contacted a company doing business under the name “United States Trademark Registration Office” and received assurance that the company has ceased sending solicitations under that name.
The judgment further requires that USA Trademarks pay $10,000 to Leason Ellis, and they also have to transfer the URL for their website to Leason Ellis. According to Schwimmer, the firm intends to donate the funds to the USPTO: “It is our desire that the Patent and Trademark Office use the monies to continue its efforts to educate trademark owners about such scams and to pursue those who perpetrate them. Trademarks epitomize goodwill and trust, so it undermines the system when those looking to protect their marks are victimized by others seeking to unjustly exploit the registration process.”
A well deserved tip of the hat to Martin Schwimmer and Leason Ellis! Thank you for your efforts. You have provided the roadmap to take down these unscrupulous actors and I sincerely hope that other lawyers and law firms will take it upon themselves to follow your lead and take the fight to the remaining entities preying on the unsophisticated.
To read the consent decree please visit the Trademark Blog — Leason Ellis Obtains Consent Decree Agreement Enjoining Publication of Trademark Catalogue.