In a memorandum decision handed down July 2, 2014, by the U.S. District Court for the Southern District of New York, most of the plaintiff claims in case 7:13-cv-02880, Leason Ellis LLP v. Patent & Trademark Agency LLC have been allowed to proceed in the face of the defendant’s motion to dismiss.
The multi-count Federal Complaint filed in April 2013 alleged that the defendants marketed their promotional materials to cause consumers to wrongly believe that it is an official governmental entity. The complaint asserted claims of federal unfair competition under 15 USC 1125(a), federal false advertising under 15 USC 1125(a) and New York statutory law, unfair competition under New York common law, deceptive acts and practices under New York statutory law, and tortious interference with prospective economic relations. The complaint also specifically alleges that the defendants are engaged in the unauthorized practice of law.
The complaint explained that Leason Ellis, which is a well regarded intellectual property firm particularly in the trademark law space, frequently “receives inquiries from clients who have received unsolicited offers for trademark-related services in the United States from various entities located in the U.S. and abroad.” The complaint goes on to further state: “Trademark scams are not new. The International Trademark Association (“INTA”)… has previously warned trademark owners about unsolicited offers for trademark-related services in the United States.
Yesterday the Trademark Trial and Appeal Board (TTAB) issued a decision in Blackhorse v. Pro Football, Inc., which canceled a variety of U.S. federal trademarks that were issued to the Washington Redskins football team between 1967 and 1990. The trademarks in question consisted in whole or in part of the term REDSKINS for professional football-related services. The TTAB ruled that these trademarks were inappropriately granted on the ground that the registrations were obtained contrary to Section 2(a), 15 U.S.C. § 1052(a), which prohibits registration of marks that may disparage persons or bring them into contempt or disrepute.
While this decision will be widely cheered by those who proclaim the virtues of political correctness, there is absolutely no doubt in my mind that from a legal standpoint this decision is clearly wrong.
From a purely legal standpoint there is absolutely no valid reason to have canceled the trademarks in question, but this is the second time the TTAB has canceled these same trademarks. Ultimately, the previous challenge was reversed as the result of laches because the challengers waited too long to bring the challenge. Laches was not an issue in this case, but previously federal courts also question the evidence, or lack thereof, relied upon the challenge the trademarks. See Redskins Can Keep Trademark.
Ten years ago, back in 2004, an interesting and somewhat unexpected story surfaced about Microsoft’s intellectual property portfolio. A man by the name of Rich Tanenbaum, who is the founder of Savvysoft, had been told by Microsoft to stop using the name TurboExcel for his own software. This in and of itself would not have been much of a story except for the fact that this news item exposed the almost incredible fact that Microsoft did not have a federally registered trademark in the United States on the name Excel.
Every company, no matter how large or small, has valuable intellectual property that can be protected. Frequently, however, many companies choose not to take the steps necessary to protect this intellectual property, which leaves the property vulnerable, weak or perhaps even non-existent in time. Generally, however, it is the so-called “Little Guy” that leaves the door open for the larger, IP sophisticated companies. This story demonstrated that even giant corporations can have intellectual property lapses. Apple has also had similarly famous lapses with respect to various “i” products, such as the iBook, which they had to acquire from a company that already had the rights to use that name commercially.
Is there anything one can do to stop competitors, large or small, from using your trade name even if you do not have a federally registered trademark? The answer is yes, although it is certainly far and away preferable to have a federally registered trademark.
You have probably had circumstances when you have positively associated with a certain trademark. Perhaps you were traveling and had the option to eat at one of several restaurants. You might have preferred a sit-down meal, but you might have opted for McDonald’s or Burger King instead because you are familiar with what you will get, know it is going to be reasonably priced and within a certain window of acceptable. This “positive association” made you pick the known over the unknown, which may have been far better, but could have been far worse and more expensive.
A trademark is a significant asset. A trademark not only becomes your company seal, but it is how consumers will relate to your goods or services. If you have high quality goods and services for a reasonable price then customers will associate your company with positive feelings and memories, so the next time they see your trademark they will conjure up in their minds a whole host of positives. This conjuring up of positive feelings, emotions and memories of satisfaction can be powerful.
If you are like me, when you travel via car over the Interstate Highway System you might have some personal favorite places to stop. I, for example, love Dunkin Donuts coffee. So if I am in the mood for a shot of caffeine I approach those blue service signs on the highway hoping to spot the Dunkin Donuts logo. If I do then I get off the exit and in search of a large (or extra-large) coffee with cream and sugar. What helps me find Dunkin Donuts, or any number of other establishments while on the road, is a familiar logo and practically all of those logos are trademarked.
In this series, we are looking at how to create strong design patents and to use them to protect your business. In the first three articles, we looked at The Power of the Broken Line to protect the shape of your product, The Power of Color to protect your graphical images, and The Power of Portfolio to build a wall of protection around your product. In this article we are looking at the “The Power of Policing Trademarks and Design Patents”.
“Policing” means actively searching for people copying your product and enforcing both your trademarks and design patents against them. Patents and trademarks don’t stop copying. If you are successful, you will be copied. They do allow you, however, to shut down counterfeiters fast. We’ve expanded the scope of our discussion to include trademarks since trademarks are your first line of defense to stop “on-line” counterfeiting. The on-line shopping sites like Amazon, eBay and Aliexpress respect them and will remove knock off listings. Design patents come into play when the counterfeiting gets serious and you need to stop bulk importers of knockoffs.
Our case study of how a small growing company can use trademarks in combination with design patents to effectively stop knockoffs will be Olloclip®, a very popular 3-in-1 iPhone camera lens attachment.
Martin Schwimmer, lead attorney for Leason Ellis and author of the Trademark Blog.
Leason Ellis LLP, an intellectual property law firm, is suing Patent & Trademark Agency LLC and Armens Organesjans in the United States Federal District Court for the Southern District of New York. Patent & Trademark Agency LLC, is a New York business entity, and Organesjans, an individual who resides in Latvia, is the principal owner. The case, 7:13-cv-02880, has been assigned to the Honorable Vincent Briccetti.
The firm is back at it again in 2013 taking on another alleged trademark scam operation after successfully prevailing in a similar claim just over 1 year ago against USA Trademark Enterprises. See Trademark Scammers Out of Business Thanks to Leason Ellis. In that case, 7:12-cv-0620 (SDNY), alleged that the defendants had engaged in false advertising and unfair competition by marketing a so-called “catalog” of trademark registrations. The case settled for $10,000, which the firm donated to the United States Patent and Trademark Office (USPTO). Thus, the defendants would do well to stand up and take notice. It seems that Leason Ellis is living by the the words that mark the youth of my generation — “We’re not gonna take it, no, we ain’t gonna take it, we’re not going to take it any more!”
The multi-count Federal Complaint alleges that the defendants market their promotional materials to cause consumers to wrongly believe that it is an official governmental entity. The complaint asserts claims of federal unfair competition under 15 USC 1125(a), federal false advertising under 15 USC 1125(a) and New York statutory law, unfair competition under New York common law, deceptive acts and practices under New York statutory law, and tortious interference with prospective economic relations. The complaint also specifically alleges that the defendants are engaged in the unauthorized practice of law.
Anybody who has any involvement with Intellectual Property (“IP”) knows full well that protecting IP means a multi-step process. Obviously, step one is the conception of the invention, idea, trademark, trade name, or other innovation where protection might be necessary. Step two is the decision about what to do with the “new” idea, etc. in terms of the need to try for exclusivity on it –or not. Many “new” things do not need IP protection – and other “new” things may not qualify for it. If the “new” idea fits into the area where protection is desirable and it qualifies, then the next step is to seek legal protection. Of course, such protection will have a cost – whether or not the protection is sought by the inventor/conceptualizer himself/herself or itself (in the case of an organization) or assistance of counsel is required.
So, let’s assume the inventor/conceptualizer takes legal steps to protect the innovation – for the case of this discussion – a trademark. Such protection involves both common law claims and filing of a registration application at the United States Patent and Trademark Office (USPTO). Legal protection has a cost – not only in money, but also in time and other resources such as market research and prior art and trademark searches.
But, it doesn’t end there. If you must defend your property – that means litigation. The costs of litigation may outweigh the value of your trademark.
Mehmet Oz, M.D. is taking the fight to the scam operators who have been duping the public using his good and extremely popular name. Indeed, the two-time Emmy Award-winning, nationally syndicated daytime series The Dr. Oz Show is launching an aggressive campaign to stop illegal use of the Dr. Oz name, image and show. This campaign dubbed “IT’S NOT ME,” began Monday, May 6, 2013.
As you may be aware, over the past several years the Internet has become overrun with advertisements featuring one or another product allegedly endorsed by Dr. Oz. On Monday Dr. Oz told viewers that he endorses none of these and he is going to fight to take back his name.
“Today I am taking back my name and protecting my viewers from people I consider dangerous, who try to mislead you into buying products I don’t endorse,” Dr. Oz told the audience. “Anything you see on this show is part of a conversation I am having with you about your health. We are always transparent about our trusted, official partnerships and a full list of these partners is available on our website.”
Firefly’s Jayne Cobb wearing the poofball hat in question.
It should come as no surprise that a nerd such as myself is into Sci-Fi, so when news of the Fox / Firefly / Shiny Hat kerfuffle hit the ‘verse, I was naturally all over it like the Alliance on an illegal salvage operation.
For those of you who are totally missing out, Firefly was a briefly lived television show that aired on Fox in 2002. It only lasted for a few months before Fox yanked the plug (a most egregious decision that I shall never EVER forgive them for). In the years that followed, Firefly – the best space western you didn’t watch – gained a cult following that gives Trekkies a run for their money. In one of the episodes, the character Jayne Cobb receives a care package from his mother containing a homemade orange and yellow poofball hat. The hat wasn’t a focal point of the episode but fans of the show, known as Browncoats, can easily be identified at conventions by wearing this most cunning hat.
Despite collecting dust on the shelf at Fox for over a decade, the fans’ devotion to Firelfly has kept the series alive. If you’ve never been to a convention like ComiCon, it’s common to see folks dressing up as their favorite character from a comic, movie, or TV Show. There may be a Viper Pilot here, a 4th Doctor there, even a Stormtrooper or two. Browncoats wear the Jayne Hat. The hat is, and has been, a favorite item of do-it-yourselfers to sell on sites like Etsy.
Maryland-based performance apparel and sporting goods company, Under Armour (UA), has recently filed a lawsuit against sporting goods giant, Nike, claiming that Nike’s use of UA’s recently-launched advertising slogan “I WILL” violated its trademark rights. More specifically, the complaint alleges that Nike willfully infringed upon UA’s trademark rights when it launched its own ad campaign displaying “I WILL” for its sporting goods and apparel in a way that is similar to UA’s longtime use of the phrase.
So, what brought about UA’s use of the catch phrase in this latest ad campaign? Well, for the past decade, UA’s classic ads have asked athletes to “Protect this House.” The response to the commercial was a natural one: “I WILL.” The trademark has been featured in relation to a wide variety of the company’s products throughout the years, either by its inclusion in product names, in the packaging of its products, and/or on the products themselves. UA promotes its goods and services via the Internet (to include well-known social networks, such as FACEBOOK and TWITTER), print media, and just about every type of digital and broadcast media imaginable.