In what many professionals in the trademark field consider to have been long overdue, a lawsuit has been filed against USA Trademark Enterprises, Inc. of Sarasota, Florida. USA Trademark Enterprises is one of numerous companies that use publicly available U.S. Patent and Trademark Office (USPTO) information to solicit individuals and businesses with trademark “publication” offers.

When a trademark application is submitted to the USPTO, the desired trademark and the ownership information of the trademark applicant become publicly accessible information that may be viewed by anyone with access to a computer. USA Trademark Enterprises, among others, see this as an opportunity to solicit the trademark applicant with what may be deemed as useless services in exchange for a fee. Generally, an official looking letter is sent to an applicant offering to “publish” their trademark in one of various trademark databases, most likely owned and published by the sender of the letter. The lawsuit alleges that these letters intend to prey on trademark applicants’ lack of familiarity with the trademark application process, are meant to confuse them into believing that the letter originated from the USPTO, and that payment of the fee is necessary for their trademark be “allowed” or “published for opposition,” which are steps in the trademark application process. The suit alleges that this behavior amounts to fraud and constitutes an unfair business practice and false advertising.

Although the letters state, in small print, that payment of the fee is not mandatory and that the letter is “an offer, not an invoice,” from my experience, this is not enough to avoid confusion. I’ve had to address questions about such letters from dozens of clients. Upon receipt of the letter, they usually call me to ask whether payment of the fee contained in the letter is necessary. In most instances, the conversation begins with their expression of frustration that they have to pay a fee about which they were not informed by me as their attorney. I routinely tell such clients to disregard the letter. This clouds the legitimacy of any trademark related communication.

A convoluted constitutional law discussion may be had on whether such letter senders are acting within their First Amendment rights, but that is not my intention herein. It is uncertain whether such opportunistic companies will ever cease to exist. Therefore, it is important for all trademark applicants, upon the receipt of any letter pertaining to their trademark, to contact their attorney or trademark administrator to find out if the letter was sent from their office, or from the USPTO. No trademark applicant, under any circumstances, should pay any fees contained in such letters without first confirming the source of the letter and whether payment is necessary for their trademark’s registration.

While companies like USA Trademark Enterprises can latch on to the transparent argument that “this is a free country,” and that no laws were broken by their conduct, it is similarly true that a “free country” allows these companies to be sued if someone feels damaged or wronged by their conduct. Since a great number of trademark applicants are confused by these letters, one can say this lawsuit is overdue.

Benjamin Ashurov is a trademark attorney with the law firm of Raj Abhyanker P.C, the top trademark filing firm in the U.S. His aim is to bring exposure to trademark bullying and to help victims who feel helpless in the face of bullying attempts. 

Of course, as most businesses do, Google® has set out to trademark this name federally with the United States Patent and Trademark Office, submitting their name trademark, along with a stylized logo trademark, application for Schemer on the same day that the service was launched. What is very interesting from a trademark point of view though, is that prior to Google’s trademark application being filed, there was another trademark application filed with the USPTO for the exact same name by Meevine Inc, an Android OS application developer. The strangest thing of all though, is that even though the classifications chosen for these two trademarks are different, the Meevine Schemer^TM trademark application description of goods and services is listed as, “Downloadable computer application software for mobile phones, namely, software to facilitate group decision making, event planning, and social networking.”

Now, I’m no rocket scientist, but this “downloadable computer application software” seems remarkably similar to the exact same kind of service that Google Schemer is all about, and in fact, Google has already released an Android app for their service titled, you guessed it, Schemer. Currently, the Meevine trademark is Published for Opposition, but to date no opposition has been filed; meaning Meevine could obtain a registered trademark for Schemer before Google’s trademark has even been reviewed by an examining attorney. Only time will tell what will arise from this situation, but it could be that Google’s Schemer will be DOA due to the possibility of trademark infringement!

Between 2001 and 2004, and long before Apple came out with their iPad, Proview Technology, based in Shenzhen, China, began purchasing the IPAD trademark in various countries, including the EU, Vietnam, Thailand and China for a tablet PC product. Their product did not do so well, and Apple came to Proview Electronics to purchase the rights to the trademark name in order to secure it for the Apple iPad, which entered into countries’ economic markets in 2010. However, it appears that Apple lawyers missed the ball on this one, since Proview Electronics never had the right to sell the Chinese trademark, which is owned by Proview Technology.

In 2010, Apple began selling the iPad within the Chinese market even though they were still in litigation with Proview Technology over who owned the rights to the trademark name. Prior to the court proceedings, Proview Technology had offered the trademark name to Apple for US$10 million. Now though, the Chinese court has granted the rights to the Shenzhen based company, and Apple will be forced to either change the entire name of the product only within China, or pay US$1.5 billion for not only the name in question, but for damages as well. Apple lawyers declined to comment on the ruling, but Xiao Caiyuan, the lawyer representing Proview, says the prosecution team attempted to say that Apple did not know they hadn’t bought the Chinese trademark claiming, “[...] this was because they could not read Chinese.”

I for one know that there are few things in this world more delicious than a chicken and kale casserole, but It’s a little tough to believe that a customer going out to buy some fast food chicken who happens to run across a store selling a shirt with “eat more kale” on it is going to become severely confused between these two products, but hey, that’s just me. Now though, Chik-Fil-A® is saying that this trademark application infringes on their Eat Mor Chikin® , a trademark they thought up by using illiterate cows as a marketing strategy in advertisements.

“Bo’s is a very different statement. It’s more of a philosophical statement about local agriculture and community-supported farmers markets,” remarks the lawyer who has agreed to represent Bo Muller-Moore, the creative mind behind the shirts, sweatshirts, and bumper stickers. He started printing in 2000, when a friend of his and local kale farmer asked for them for his family and it quickly became a business as more and more people wanted to show their pride in the vegetable. “Our plan is to not back down. This feels like David versus Goliath. I know what it’s like to protect what’s yours in business,” says the 38-year-old artist turned business man.

Currently, the trademark in question is still moving through the application process, and only time will tell what the outcome of the litigation is. However Vermont Law School professor Oliver Goodenough, who specializes in intellectual and property law, said the kale versus “chikin” fight, “[...] looks a bit like an example of over-enthusiasm for brand protection. There are [law] firms in the United States that take this over-enthusiasm for brand protection seriously and believe the more they can scare away the better.” Whatever the case may be, whether you choose to eat more “chikin” or kale is ultimately your decision.

To date, there have been over ten new trademark applications filed with the United Stated Patent and Trademark Office that correspond directly to the OWS movement, most notably “Occupy Wall Street” by Fer-Eng Investments, LLC, a company based in Rancho Santa Fe, California and “Occupy Wall Street” by Occupy Wall Street from New York City, New York. Both of these applications were filed no more than one month ago and both have filed under classifications for leather goods and clothing. Other notable trademark applications pertaining to OWS would be “Occupy D.C. 2012”, “Occupy LA”, “I’m Occupied” and “Occupy Together”. Another trademark application, “Occupy Wall St.” by Diane Maresca from West Islip, New York was expressly abandoned after being filed.

The remarkable thing about all of these applications is the disregard for the actual ideals of the movement that these applications portray. Case in point, these applications are strictly for products or entertainment services; is there really anything political or serious about leather goods and clothing? If the individuals/organizations attempting to register these trademarks actually believed that what they were doing was a true social movement, I would suggest they apply for “personal and social services rendered by others to meet the needs of individuals.” For now it seems like it’s a race to see who can own the rights to the name to make a quick buck from tourists snapping pictures in the New York financial district.

In the end, the joke will ultimately be on these people, who paid god knows how much for their applications as each classification chosen is typically a multiplication of the fee required. The typical trademark can expect to receive registration only after it has been approved by the examining attorney at the United States Patent and Trademark Office and has been published for opposition, a time frame of approximately seven months only if the examining attorney doesn’t issue any requests for revision of the application upon review. Regardless of whether this movement is a fad or something more that does change the political and economic landscape of this country, one thing is for sure: by the time these trademarks are registered, there will be no commercial value to them because the social climate changes faster than you can say, “Occupy what?”