For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Wednesday, 20 June 2012

Nice one, Marty, as scammer gets just desserts

It's no secret that this Kat was motivated to start blogging back in 2003 when he first saw Marty Schwimmer's Trademark Blog. He has often had a chance to express his gratitude, but not so often has he been able to congratulate him for anything other than for his foolhardy courage in agreeing to fund the beer, in whole or part, at the annual INTA fringe Meet the Blogger sessions.  Today however is such a day.  Marty is now with Leason Ellis LLP, a White Plains, NY, law firm which has taken an initiative usually left to lawmen, not lawyers -- metaphorically speaking, by deciding to make a start in cleaning up the town. According to the firm's media release:
"Leason Ellis LLP ... obtained a final judgment against USA Trademark Enterprises, Inc. of Sarasota, Florida, and its principals [on which, see earlier Katpost here, which attracted not a single comment. Shame!]. The judgment was entered by the Hon. Edgardo Ramos of the United States District Court for the Southern District of New York [you can read the judgment in full on the Trademark Blog here].

The multi-count Complaint alleged that defendants had engaged in false advertising and unfair competition by marketing a catalog of trademark registrations, which offered no commercial value as the published information is freely available in the online records of the U.S. Patent and Trademark Office (“USPTO”) [it's no comfort to contemplate how many of these 'services' are on offer, but there are plenty more out there for anyone else who wants to sue them]. The Complaint further alleged that defendants were confusing consumers into believing that the catalog was legitimate by sending unsolicited notices designed to make it appear as though USA Trademark Enterprises was an official government enterprise.

Although USA Trademark denied wrongdoing or liability, the judgment permanently enjoins it from selling the catalog again. It also bars the company from ever engaging in trademark or intellectual property-related activities in the United States.
Marty: shining example
According to [Marty, who led the assault in court] “Our lawsuit and its successful outcome have shined a bright light on a disreputable practice which preys on unsuspecting trademark owners.” Schwimmer notes that since the lawsuit was filed, the USPTO has started sending trademark registrants warnings about trademark-related solicitations. The Office has also even contacted a company doing business under the name “United States Trademark Registration Office” and received assurance that the company has ceased sending solicitations under that name [Merpel is impressed; she thought the company might make a fight of it, pleading its right to freedom of expression ...].

The judgment further requires that USA Trademarks pay $10,000 to Leason Ellis. According to Schwimmer, the firm intends to donate the funds to the USPTO [the Kats hope that this donation is without prejudice to any sums that might be coming the way of the Meet the Bloggers Beer and Refreshments Fund]: 
“It is our desire that the Patent and Trademark Office use the monies to continue its efforts to educate trademark owners about such scams and to pursue those who perpetrate them. Trademarks epitomize goodwill and trust, so it undermines the system when those looking to protect their marks are victimized by others seeking to unjustly exploit the registration process.”
...".
Nice one, Marty -- you have set an admirable and shining example which this Kat hopes will be emulated.  And it's good to know that there are some jurisdictions in which this sort of activity is actually unlawful.  Having corresponded with IP lawyers and government officials in many countries, this Kat has received an inbox-full of assurances that there's little or nothing that can be done in most of them.

MARQUES's initiative on dealing with scams here
Get beer and $10,000 here

1 comment:

Daniel said...

Good news indeed! (And thanks for reporting it.) If this type of scam is misleading and deceptive, then it probably s unlawful in many countries under 'fair trading' legislation. The problem is how to organise action to stop it. Short of isolated 'white knight' actions like those of Marty Schwimmer and Leason Ellis, maybe the best way is to get the top 5 or 10 patent/tm firms in each jurisdiction to each commit a small proportion of the cost/time required to take action against scammers in the jurisdiction. e rewards could be kudos in the field, client gratitude and a warm glow of satisfaction.

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