More On Trademarkia

An earlier post alluded to the puff piece in the ABA Journal extolling alleged service known as Trademarkia. On the heels of that, one sees that it’s employees “(farm animals” according to one) are not very happy. http://www.glassdoor.com/Reviews/LegalForce-RAPC-Worldwide-Reviews-E266835.htm

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Just, Desserts

@ThinkingIP is where I publish observations, one of which, yesterday, was that I had been “followed” by Trademarkia, the commodity trademark service. It is the nadir of my Twitter activity, to date. Then, today, unaccountably, the ABA Journal published a puff piece about Trademarkia.

 

Fortunately, comments are enabled:

here are the first 9:

Comments

1.John
Sep 24, 2013 12:40 PM CDT

He did it by sending out questionable advertising and updates via email and print to trademark lawyers AND their clients once a trademark is applied for.  This can cause confusion among the clients and is frankly annoying to the attorneys.  But hey, $8.5 million dollar book of business—what a legal rebel!  Lol.

2.Mike
Sep 25, 2013 3:23 PM CDT

I wonder how his employees feel about working for him? Are they happy?

3.Mike
Sep 25, 2013 3:25 PM CDT

Also, does he only have attorneys file his trademarks or does he use non-attorneys as well? Only reason I ask is that other companies have gotten in trouble with this so you always have to wonder.

4.TMthis
Sep 27, 2013 6:57 AM CDT

I agree with John, this guy has sent unsolicited emails and other junk mail to clients-including myself- and likely other trademark filers) that incentivize through confusion. If that’s how one builds a $8.5 million book of business, then I guess nobody cares.

5.Nate
Sep 27, 2013 7:56 AM CDT

Yeah the advertising is misleading and super questionable.  I stopped listing client’s email addresses on trademark apps just to avoid them calling me up every week confused by these emails.

6.Patrick Blake
Sep 27, 2013 8:38 AM CDT

We have had several clients come to us after using Trademarkia and the results has uniformly been substandard.  Similar to the poster above, I question whether intellectual property attorneys are handling the filings, which is a nice way to pump up profits if you don’t care about things being done correctly.  Also, the Trademarkia “employee” I spoke with most recently failed to file a Statement of Use for (now my) client.  When he contacted my client with a hefty bill to correct his error, I was forced to get involved to point out his mistake.  In the interest of full disclosure, a manager became involved in the case and the SOU was filed with no additional cost to my client, but I would steer clear of this service if possible.

7.Trademarks in Florida
Sep 27, 2013 8:58 AM CDT

I too have inherited several clients and needed to clean up the messes made by this firm. If an application does not go through on first examination, the fees the clients end up paying are usually more than my flat fee. I don’t even try to have a web presence because my flat fee is way more than their initial fee and I don’t feel that I should have to field all the calls from people asking me why I’m so expensive when I am actually appropriately priced. These people are never going to hire me anyway if they are looking for an attorney on the web.

I have also had to cancel a mark that they filed for a non-existent person! They do not even confirm the identity of their clients.

I actually believe that the success of this firm is a by product of the In re Bose decision. There is no reason to double check anything anymore since the standard for fraud is not met if you are blissfully ignorant of the facts. Don’t ask, don’t tell lives on at the PTO.

I could continue.

8.TM in Westchester
Sep 27, 2013 9:23 AM CDT

Every client I work with becomes a subject of Trademarkia’s relentless poaching efforts.

9.Paul
Sep 27, 2013 11:55 AM CDT

It is hard to argue with an $8.5 million book of business, but the sad truth is that clients get what they pay for.  I have been asked to pick up the pieces from their shop at least 5 times, and in each case the problems were preventable—and the solutions cost the clients far more than if they had used someone else in the first place.  In one case his firm filed trademark applications for identical marks for very similar services, and when the Examining Attorney objected to one application they tried to negotiate a co-existence deal with both of their clients.  My client was then told that she had to get new counsel—for a matter that they never should have taken in the first place (and they refused to refund her fees paid to them.)

Gnarly Problem Produces Peculiar Solutions

The scourge of Patent Trolls is much-discussed, and ill-understood. Not a day goes by when one or more solutions to the problem is not offered. Yet, suits by Non-Practicing Entities, the polite word for people who sue for a living, remains steady. Some say it’s an inefficient use of limited Court resources. Others say it’s just people cleverly making the U.S. Patent enforcement system work for them. The truth lies somewhere in the middle. Then again, a troll was sued this week for RICO violations, on the basis of allegedly frivolous claims filed in a number of Districts.

But, courts have taken notice, and I have personally seen it in my practice, even within the last few months.

Now, we learn of a Federal Judge in the Northern District of California, who has taken matters into his own hands. Apparently the (now) unfortunate troll, er, NPE, tried to gin up a sham office in East Texas, to try to get venue there. That failed, and when the case ended up in N.D. Cal, a judge there decided to drill a bit deeper.

In his order leading up to trial later this month of the patent infringement claims brought by non-practicing entity (“NPE” or “patent troll”) Network Protection Services, LLC (“NPS”), Judge Alsup suggested he’d allow the jury to hear evidence of how:

NPS manufactured venue in Texas via a sham. [NPS founders] Ramde and Lam rented a windlowless file-cabinet room with no employees in Texas and held it out as an ongoing business concern to the Texas judge. They also held out [alleged employee] Cuke as its ‘director of business development’ but this too was a sham, a contrivance to manufacture venue in the Eastern District of Texas.

MPAA Goes To School

The folks who consistently bring you file-sharing suits have decided to go to the source: curriculum content in schools, to combat piracy. Probably artists would prefer that the money would go to increasing their royalties, but that ignores the fact that there is a piracy-industrial complex that must be heard. Of course piracy is bad, but is this issue-setting program the best way to get it? Some would argue that by making content available for a fair rate would help more.

Thinking Out Loud

A recent listserv discussion broke out about signing documents on behalf of clients at the USPTO. I guess I am of the old(er) school to the effect that clients make  representations, and I represent clients. My practice, which I think the majority of practitioners follow, is to have the client sign an application or maintenance filing. Here’s my reasoning:

As a litigator and somebody who also prosecutes trademark applications ( and also someone who is old enough to remember having to file paper applications), I think that if a case ends up in active litigation, having had the client execute the trademark application (or maintenance filings) is a good idea. Just my $.02. The act of signing something that is going to form the basis for a filing and a representation before the PTO is a salutary undertaking for clients. Your mileage, etc. This is not to say, that in exigent circumstances, with long-standing clients, the rule is always followed, but I think it is good practice if you can do it. On security recordations, I don’t see the same issue, since the document being filed with the Assignment Branch is an informational filing premised (one assumes) on an existing document that someone other than counsel has already executed. If there is disagreement, I am open to the argument.

 

Subway’s Footlong Is Not. [WITH UPDATES]

[Update September 6]

And, oh by the way, FOOTLONG is not registrable. http://thettablog.blogspot.com/2013/09/precedential-no-36-ttab-finds-footlong.html

Subway’s recent problems with the verisimilitude of its FOOTLONG (or not) brand for doughy sandwiches made with pre-cut, pre-measured ingredients is an interesting collision of trademark law and market hype. As many of you know from reading this space, the writings of the popular press sometimes have very little connection to what is actually going on in a particular case or controversy, so let’s break this one down.

[Update January 25] There are now reports of the inevitable lawsuits claiming false advertising. I see coupons on the horizon.

The Subway sandwich shop chain is ubiquitous in the U.S., appearing in standalone locations, gas stations, large retail chains, and other places that only they have thought of. The company, a franchise megalith, sells standardized sandwich meats on rolls. In different parts of the country, they variously fall into the category of hero, hoagie,  sub, submarine sandwich, grinder, po’boy, bomber or torpedo. Up here in Maine, they are called “Italian sandwiches”. Same thing: spongy bread holding sandwich meats, meatballs, tuna salad, and what not.

Well, how best to distinguish their offering from that of others? Subway decided to call theirs FOOTLONG. Spoiler Alert! It’s not. It is more like 11 inches. Everyone got into the act. The whole thing apparently started in Australia, when the Subway folks initially said the bread wasn’t baked right “this bread is not baked to our standards,” Comments and hilarity prevailed.

So Subway took  another tact: they claimed that the word was, in fact operating as a true trademark and not merely describing the product.

As reporting in HuffPo (via Buzz Feed), here is Subway’s explication:

With regards to the size of the bread and calling it a footlong, ‘SUBWAY FOOTLONG’ is a registered trademark as a descriptive name for the sub sold in Subway® Restaurants and not intended to be a measurement of length. The length of the bread baked in the restaurant cannot be assured each time as the proofing process may vary slightly each time in the restaurant.

Hold on. Let’s start with the facts. The mark SUBWAY FOOTLONG is not a registered trademark, at least in the U.S. [Update: apparently the compound mark SUBWAY FOOTLONG is registered in Australia and New Zealand, but here we are focussing on the single word mark FOOTLONG]   Subway has sought to register FOOTLONG IN THE U.S., but has to date been unsuccessful. Their application (Serial No. 77324328) was filed in 2007 and was once suspended because of the existence of another registration incorporating the term FOOTLONG, namely FOOTLONG EXPRESS (Registration No. 2161133). The original FOOTLONG EXPRESS was cancelled in an adversary proceeding, and now Subway’s own FOOTLONG mark is held up in an adversary proceeding. Although at one time the FOOTLONG registration faced opposition from a who’s who of fast food proprietors, most withdrew their opposition. But, the argument is being pursued by at least one competitor . Here’s an excerpt from the Table of Contents from their trial brief before the TTAB.

.pic

So, give the Subway folks credit: they are consistent: a measurement is not descriptive in that it does not accurately describe the product. But, to use a mark that is misdescriptive is problematic, to say the least. It’s a tough position to put over on the PTO, as well as consumers. What kind of brand misdescribes and misdirects? A weak brand (at best). Your mileage may vary.

[Update January 25]  Well, after all that, Subway has reversed its position, now stating “We have redoubled our efforts to ensure consistency and correct length in every sandwich we serve,” the statement said, while declining to offer comment on the suits specifically. “Our commitment remains steadfast to ensure that every Subway Footlong sandwich is 12 inches at each location worldwide.”

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.