The Decline of the Trademark Register

Trademark registrations have a singular meaning in law. The U.S. Patent and Trademark Office, as good a source as any, I suppose, lists the advantages of securing the registration:

Owning a federal trademark registration on the Principal Register provides several advantages, including:

  • Public notice of your claim of ownership of the mark;
  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  • The ability to bring an action concerning the mark in federal court;
  • The use of the U.S. registration as a basis to obtain registration in foreign countries;
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
  • The right to use the federal registration symbol ®; and
  • Listing in the United States Patent and Trademark Office’s online databases.

  

Fair enough. It is a relatively simple process to secure a trademark registration, and rights (as discussed above) attach to them. But, keep in mind that trademark rights, at their core, arise from usage, not simply from registration. Lack of usage may result in a loss of rights, whether in a limitation of goods or services covered, geographic limitations, or worse, non-use.

 

Over the last ten years or so, trademark registration has become commoditized. Consumers can file their own applications on line. Marketers, such as LegalZoom, Trademarkia and others have cropped up. Whilst assuring us that they are not law firms, they carry out functions that law firms historically have carried out. Simple, right? Unformtunately, no.

 

On balance, filing an application through a commoditizer, results in poor, inaccurate and simply rotten registrations. I am leaving aside the fact that applicants who file through these services are much more unlikely to get a registration. Trademark applicants represented by attorneys are 50% more likely to earn a stamp of approval from the U.S. patent office than those who go at it alone,according to a new academic study.

 

So, just to be clear, I am not even talking about that. I am talking about the crap registrations that do come out of the end of the Trademarkia pipeline.

 

Let me tell you a little story. Just one, there are many more. A few months ago, a new client came to me with a dispute over IP that she had brought with her to a new business. Including in that IP was a trademark registration that, she said, would trump the claims of the opposing party. She gave me the Registration Number, and I looked it up. She had filed it through Trademarkia.

 

The filing was useless:

 

  1. It was for a design she was no longer using;
  2. It had the wrong priority date
  3. It had a very imprecise goods description, which only in the most drug-addled circumstances could be seen as covering the actual services (not goods) that she was talking about.

 

In short, the registration was garbage, she had spent what ever fee Trademarkia charges for not being a lawyer, and probably had hurt her position.

 

It happens all the time.

 

On top of that, trademark applicants and registrants are inundated by scammers who, having the benefit of the name and address of the applicant/registrant, are sending official looking “invoices” saying that one filing or another is due to be made on existent or non-existent “registers”. It’s a little like the old scam where you can pay $500 to name a star in some nonsense book, which is then copyrighted. Sounds cool. It’s worthless.

I have practiced trademark law for years. I try to do the best job for my clients and explain the significance of the choices made during the application process. (By the way, the reason LegalZoom and Trademarkia applications fail at a higher rate is attributable, in part, to the fact that if the application generates an Office Action, that requires some thought). At any rate, I obtained a registration for a relative a few years ago, and recently I reminded him that he had to make a Section 8 & 15 Declaration to preserve the registration. He told me he wanted to wait and see (there’s a 12-month window, so that’s fine). I checked in with him over the weekend (I did this for the “family rate” (=$0)) and he said: “Oh, I got the invoice last month and paid it.” Scammer. I checked the registration; nothing has been filed. I am sure the fact of the payment invoice is memorialized in a copyrighted book somewhere registered in the Library of Congress.

 

In short, registrations are being cheapened by this hucksterism. The rubes, er, trademark owners have less that they thought (if in fact they thought anything). And the trademark practitioners are left to clean up the mess. For a fee, which will cause great complaint.

Advertisements

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: