After all these years I am finally getting around to registering various trademarks associated with IPWatchdog. Recently I received a rather official looking notice in the mail from Global Business Option, Inc., which solicited payment of $960 per trademark for publication in the “The Global Trademark and Servicemark Selection of the USA” catalog. Why would I want or need to have my trademarks published in some catalog?
The notice, which at the bottom says that it “is an offer, not an invoice,” stated:
The law considers a trademark to be a form of property. Your above registration provides a notice to others that your described trademark/servicemark is already taken. Our publication contains a depiction of your registered mark, the identification of goods and/or services, year of the registration and owner information as well.
Interesting, because there is no requirement that trademarks be published this way, and if folks were interested in searching and did even a basic trademark search using the USPTO system they would find our pending applications. So the filing of a trademark application and receipt of a trademark already provides notice that the mark is taken. I wonder how many people have fallen prey to this solicitation?
It seems that I am not the only one receiving these notices, and it also seems that Global Business Option is not the only company that is trying to make money selling a publication service that provides no benefit.
Leason Ellis LLP, an intellectual property law firm located in White Plains, New York, recently filed a Complaint against USA Trademark Enterprises, Inc. of Sarasota, Florida, and its principals Timea Csikos and Andras Nemeth. The complaint was filed with the United States District Court for the Southern District of New York, White Plains Division. The case, 12-cv-0620, has been assigned to the Honorable Edgardo Ramos. 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.”
The multi-count Complaint alleges that USA Trademark Enterprises has 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 alleges 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.
But would someone believe these types of notices to be official notices that require action? In some states after you file the paperwork to open a corporation you need to publish certain information, and that is absolutely required, so it seems believable that people might reasonably believe these notices to be official, right?
Exhibit 1. After being out of town for several days on a PLI speaking tour when I arrived back home Renee greeted me with a variety of things that needed my attention. One of those things was the above mentioned offer to publish our trademarks. After reading the GBO offer to publish I told Renee, “this is a scam, we don’t need to do this.” She responded, “really?” Renee explains:
I knew we had filed for trademark protection, so when I opened the letter I just assumed that this was a necessary step in the trademark process. I assumed that there was some affiliation between GBO and the USPTO. I thought the fees were quite high, but assumed they were necessary to complete the trademark filing. Had I been in business on my own and not had access to ask an attorney I would have likely paid the fees thinking it was a requirement for issuance of our trademarks.
So how many people have simply paid this “offer” thinking that this was a necessary step in registering a trademark? Probably plenty, and that is a shame. The notice seems to quite clearly imply that publication is necessary, or at the very least an important step to preserving and protecting your trademark property. Is it fraud? I think so. Will it legally be determined to be fraud? We will find out. It is certainly misleading, if you ask me, and those who create these have to know that the reader will be duped into thinking this is either required or at least very important. The truth is that it is neither required, nor is it important at all.
Martin Schwimmer is the lead counsel for Leason Ellis in the case against USA Trademark Enterprises. He is known to many in the industry as the author of the Trademark Blog. Upon filing the complaint Schwimmer said, “our clients are routinely receiving bogus notices from companies like USA Trademark Enterprises. Unbelievably, USA Trademark Enterprises even sent a notice to us when we registered our firm’s logo. They are obviously mining the records of the USPTO and targeting novice trademark registrants who can be mistakenly led to believe that the catalog has any legitimate public notice value.”
It really is almost unbelievable that those who are trying to perpetrate this scheme would send a notice like this to a law firm where one of the partners is the author of the Trademark Blog. I thought it was rather ridiculous that GBO would send me a letter, although any more I primarily do patent work. But seriously, if you are going to try and fly under the radar don’t you think you should be a little more careful about who you send notices to?
Schwimmer added, “We are concerned that U.S. trademark registrants receiving these solicitations have actually handed over money for what amounts to mere public notice services – a benefit already bestowed upon a U.S. trademark registrant as a matter of law. Anyone who has done so should immediately contact competent trademark counsel concerning those transactions. Of course, we are also interested in speaking with them about their experiences as they are likely relevant to our case.”
The complaint seeks an order permanently enjoining the defendants from offering for sale Trademark Publication services or other similar service or product. The prayer for relief also seeks an accounting of “profits pursuant to its unlawful activities,” as well as “punitive damages in view of the willfully unlawful marketplace misconduct of USA Trademark Enterprises…” Treble damages, costs, attorneys fees, pre-judgment interest and “such other and further relief as the Court may deem just and equitable” are also requested.
Of course, as with any complaint, so far we have only one side of the story. I can’t for the life of me imagine a valid counter-argument that can be articulated in open court with a straight face, but if the case doesn’t settle then I’m sure we will hear some kind of argument, valid or otherwise. Of course, USA Trademark Enterprises and others operating in this space probably ought to fear a class action being brought against them. While one particular person or company losing $960 on these useless services is one thing, if everyone could be combined into a class action that would really capture the attention of the ne’er do wells operating in this space. The names of “customers” will likely be the in the first discover request by Schwimmer. Stay tuned!
Good luck and godspeed to Leason Ellis! Hopefully they will score a decisive victory over this skullduggery.