To follow up on the topic that I brought up last week, it appears that the USPTO decided to post warning to the public regarding non-official trademark related solicitations. The reason for the posted warning appears to be that “Trademark applicants and registrants continue to submit a significant number of inquiries and complaints to the USPTO about such solicitations . . .” The warning can be found here, and is also reprinted below. Although it may reduce consumer confusion, it is fairly unlikely that most recipients of solicitation letters will ever come across this warning.

WARNING: Non-USPTO Solicitations That May Resemble Official USPTO Communications

Be aware that private companies not associated with the United States Patent and Trademark Office (USPTO) often use trademark application and registration information from the USPTO’s databases to mail or e-mail trademark-related solicitations. Trademark applicants and registrants continue to submit a significant number of inquiries and complaints to the USPTO about such solicitations, which may include offers: (1) for legal services; (2) for trademark monitoring services; (3) to record trademarks with U.S. Customs and Border Protection; and (4) to “register” trademarks in the company’s own private registry.

These companies may use names that resemble the USPTO name, including, for example, the terms “United States” or “U.S.” Increasingly, some of the more unscrupulous companies attempt to make their solicitations mimic the look of official government documents rather than the look of a typical commercial or legal solicitation by emphasizing official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records. Many refer to other government agencies and sections of the U.S. Code. Most require “fees” to be paid.

Some applicants and registrants have reported paying fees to these private companies, mistakenly thinking that they were paying required fees to the USPTO. So, be sure to read trademark-related communications carefully before making a decision about whether to respond. All official correspondence will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “@uspto.gov.”

If you receive a trademark-related solicitation that you believe is deceptive, you may file an on-line consumer complaint with the Federal Trade Commission (“FTC”), at www.FTC.gov. Although the FTC does not resolve individual consumer complaints, it may institute, as the nation’s consumer protection agency, investigations and prosecutions based on widespread complaints about particular companies or business practices. If you wish to contact the USPTO regarding such solicitations, please e-mail TMFeedback@uspto.gov. When notifying us about or forwarding a misleading communication, please also specify whether the recipient thought it was an official USPTO communication and whether fees were mistakenly paid.

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.

This informative and expansive piece by Businessweek uncovers one of the more egregious bullies out there. EMI’s acts are made worse by the fact that the people that they target are actually part of the group that they purport to be helping.

The founder of the largest trademark filing law firm in the world talks trademarks and bullying.

Raj Explains, “There are a number of measures companies can take to protect themselves from trademark bullying:

1.)Companies should take extreme care when deciding on the mark they want to register. Conducting a thorough search of any similar marks prior to filing a trademark application can limit future legal conflicts.

2.)Trademark owners should familiarize themselves with the basics of trademark law. Even a superficial understanding of basic trademark concepts can be enough in order to discern whether a legal action arises out of a legitimate claim or out of an owner’s unreasonable interpretation of their rights. An ability to recognize when one is being bullied is critical to thwarting a bullying attempt. Therefore,
individuals should accumulate the trademark knowledge needed to identify bully attempts.

3.)Individuals should not automatically back down in the face of a bullying attempt. Many trademark enforcement actions are commenced without a deep inquiry into the facts. Therefore, if one shows a desire to refute an infringement or dilution claim, a bully is more likely to abandon the enforcement action.

4.)Offering to use alternative dispute resolution services, such as mediation or arbitration, can reduce the costs of defending one’s trademark use.

5.)Evaluate whether it would make sense to offer to sell your mark to the people or company that want you to stop using it. But do not accept lowball offers to settle.

6.)Use free online resources to find out the results of any previous similar actions taken by the company who is threatening you, against others with marks similar to yours. If others prevailed against the bully, your odds of prevailing are improved.

7.)Wait until your mark is registered, not just filed, before investing large sums of money in marketing, branding or manufacturing with the mark.

8.)Publicize the wrong. Get your customers and the public on your side. There are examples of bullies who decided to abandon their enforcement action due to the negative publicity it generated.”

I caution you that this story may bring tears to your eyes. It is rare to find a man who will go to these great lengths in order to do the right thing, to fight injustice, and to prevent others from going through the same dungeon of chaos he and his family were forced to go through. This man’s name is Carl and he is an inspiration to us all. For 7 years, he battled Nestle’s litigation machine. He nearly lost his business, his personal assets, and all faith in our legal system. Nestle was so committed to destroying Carl’s resilience that they scheduled a court date on his 50th birthday.

I urge you to read his story. Every American consumer should be privy to this information. If Carl deserves anything, it is to avoid having his story go unnoticed. Please read it here: Carl’s story.

The latest battle between computing product rivals Microsoft and Apple is over Apple’s desire to register the term “App Store” as their trademark. When reading the legal briefs exchanged between the two sides, one cannot escape the feeling that this seems like a battle between two siblings who are each willing to undertake any measure, no matter how underhanded or petty, to ensure that their mother sides with them and not with the other. Each makes valid points, to an extent, yet neither fails to stretch the truth.

Microsoft latest move was to claim that Apple’s brief should be dismissed because it exceeded the allowed limit of 25 pages. While the substantive portion of Apple’s brief was contained to 25 pages, their table of contents pushed the brief to 31 pages. In addition to complaining about its excessive length, Microsoft also complained that Apple’s type-font is smaller than the minimum allowed size 11. Although Microsoft is correct in their assertion regarding the page and type-font limits, employing this tactic shows weakness in their position. Instead of addressing Apple’s substantive claims, Microsoft bought itself more time to respond by pulling what may seem like a “cheap” move.

In their “extra-long” brief, Apple responded to Microsoft’s January brief filing with the Trademark Trial and Appeal Board. In their January brief, Microsoft argued that Apple should not be allowed to own trademark rights to the term “App Store.” This argument essentially states that APP STORE has become generic, and therefore Apple must be precluded from registering the mark as its own. Microsoft proceeds to include a smorgasbord of examples relating to how APP STORE is commonly used in today’s culture. However, their brief seemed to ignore the fact that a finding of genericness does not require a showing of a few examples of common usage, but a showing that a majority of the relevant public uses the term APP STORE generically for any online software store.

Apple responded by claiming that Microsoft “missed the forest for then trees.” Apple’s brief goes on to claim that when people use the term APP STORE, they refer only to Apple’s APP STORE, not other application marketplaces. While this may have been the case at some point in the past, it does not accurately reflect today’s usage of APP STORE. A simple Google search indicates that in addition to Apple, other brands’ software marketplaces are similarly referred to as APP STORE. Two examples are Android’s AND APP STORE, and Research in Motion’s BLACKBERRY APP STORE (although officially called ADNROID MARKET and BLACKBERRY APP WORLD respectively).

While Apple claims that people’s usage of APP STORE refers only to their application market, and Microsoft claims that APP STORE refers to any application market, the truth lies somewhere in the middle. Unfortunately for Microsoft, that is not good enough since they carry the burden of proof to show that APP STORE has become generic. For now, at least they bought themselves more time by pointing to Apple’s brief and screaming “their font is too small! Their font is too small!”

Darcy wrote:

I posted a design on CafePress.com that read “Caution: Absurd warning labels were written for me.” It was taken down a few days later by CafePress because in accordance with our Intellectual Property Rights Policy, the owner of the “Caution” trademark, has notified us that the use of the word “Caution” in product titles, product descriptions and/or in products potentially infringes upon the “Caution!” trademark.
They listed the contact information for this company as Caution Brand Apparel, P.O. Box 4802, Covina Ca 91723 legal@cautionwear.com
Upon doing some research, I found that this guy does have the copyright for CAUTION! But has been claiming the rights to the word if it used at all on clothing or even the Internet. He even went after the website caution.com for trademark infringement and lost.

How can anyone claim the right to a generic word no matter how it is used? That is like Apple saying that you can’t use the phrase “An apple a a day” on a t-shirt!