MEMO TO: ZOOM INC. ( AND YOUR LAWYERS) DON'T BLAME MOTOROLA , IT MUST BE THE FAULT OF THE USPTO!

From a trademark observers outpost- this doesn't fall into the category of " what in the world were they thinking" But it's close.

It has been widely reported that Zoom Inc., an online money transfer company, using the term XOOM to identify its services, filed a lawsuit against Motorola on the day that Motorola introduced a tablet computer under the name XOOM.

The complaint that Zoom's lawyers filed has a tone of indignation. It accuses Motorola of wilfully and deliberately adopting the term XOOM to trade on Xoom Inc.'s reputation. The complaint notes that Motorola brazenly filed its own application to federally register the term XOOM even though Xoom Inc. already had secured a federal trademark registration for the identical term.

I guess if one's motive is to disrupt the introduction of the XOOM computer there is some logic to this strategy. But its not a compelling trademark story.

Yes indeed, Motorola filed to register the term XOOM long after Xoom Inc. secured its own federal trademark registration.

But guess what? The USPTO examining attorney DID NOT EVEN MENTION that registration when she reviewed Motorola's trademark application. She cited an existing registration for the term ZOOM against Motorola. But Motorola answered the examining attorney's concerns and the USPTO approved Motorola's application. In other words the federal trademark office compared XOOM to XOOM and said "no problem".

Could Xoom Inc. still have a claim against Motorola? Well sure. But to claim that Motorola has brazenly ignored their rights when all Motorola did was to successfully play the trademark registration game is a real stretch. Reminds me of a scene from a Jim Carry movie.

ARE YOU URBAN HOMESTEADING IN YOUR URBAN HOMESTEAD? THEN REST EASY.

My oh my didn't the Dervaese family step squarely into a home made cow pie. These folks have apparently been among the more well known advocates of urban homesteading. Using their website and their numerous blog sites their personal urban homestead has become very well known.

Although the family promotes a share the wealth philosophy that philosophy seems to have been a casualty of an ill conceived trademark land grab. So far it has been a pr nightmare. They have been anointed with the kiss of death label "trademark bully". Based on what I have read, they seem like trademark dunces rather than trademark bullies.

For some reason these folks secured a federal trademark registration for the term URBAN HOMESTEAD. To identify a place- as in "your urban homestead?" Nope. The putative service mark identifies a laundry list of educational services. If you visit their website you will be hard pressed to find any service mark use of the term urban homestead. Indeed, these folks kindly provide visitors with a definition of the terms urban homestead and urban homesteading. Definitions that do NOTHING to advance their claim that the terms URBAN HOMESTEAD or URBAN HOMESTEADING are exclusively associated with their educational services.

But wait they say, we only object to the commercial use of "our " terms. That's like the owner of the shoe store saying "It's ok for my customers to use the term shoe but not ok for other shoe stores to use the term shoe." Lots of luck with that claim.

In the softly worded letter these folks sent out they kindly asked those using the terms urban homestead and urban homesteading to identify them as trademarks when referring to the Dervaese family. Only problem with that request? The Dervaese family has apparently never done so when referring to their own services. Again, their website is a treasure trove of bad trademark grammar. It can be a tall tall task indeed to ask a legal tribunal to enforce your rights in a word or phrase against third parties when you have utterly failed to properly use that word or phrase.

As a final infirmity, these folks are asserting trademark rights in the term URBAN HOMESTEADING based on a Supplemental Register registration!! I won't bore the reader with insider baseball but suffice it to say that I would think very long and very hard before I started throwing my weight around using a federally registered trademark from the Supplemental Register.

I suspect that it will be the collective wrath of their own kind that will force the Dervaese family to withdraw. If not, they may learn some very painful trademark lessons.

MEMO TO INTA: ICEBERG AHEAD! ICEBERG AHEAD! YOU CAN'T AVOID IT BY SHUFFLING DECK CHAIRS

I respect Alan Drewsen, the Executive Director of INTA. He is a thoughtful man. But the comments he recently submitted to the United States Patent and Trademark Office about trademark bullying were warmed over pablum. Meant to mollify INTA's members. Mr.Drewsen's remarks can be summarized as follows:

Problem what problem? If there IS a problem it's simply that the public and small brand owners don't understand the crushing burdens faced by blue blood brand owners. And the Internet has only made it worse!! Now the misunderstandings get amplified.
And the solution? Keep everything just as it is. But educate the unwashed on the subtleties associated with the terribly complex topic of trademark law.

Ironically INTA's testimony was released on the same day that an ex employee of the Coach leather company filed a class action lawsuit against the company. When she attempted to sell her genuine Coach(R) bags on eBay, her eBay account was suspended and she received a threatening letter from the Coach lawyers. They charged her with selling counterfeit goods. They stated that she might have to pay as much as 2 million dollars for her sins. And they insisted that she send them $300.00.

And it gets better. An independent trademark blogger noticed that the the letter in question was almost certainly a form letter, since he found another letter from the same firm, with almost identical language and an identical signature, sent to a different small entity.

To summarize: highly visible, large brand owner sends over the top form letter to individual, ex-employee, selling genuine goods. Without ever bothering to check the basics. Oh yeah, highly visible, large brand owner also gets eBay to shut down ex-employees account.

And what does the ex-employee do? Unlike the old days- pre Internet- the little person doesn't simply roll over. Nope. Instead the little person go trolling( couldn't resist) for others who had suffered from such bullying.

But the courts can sort it all out? Oh really. As Professor Kenneth Port has noted in describing the "death" of trademark law, as the number of trademark cases filed has gone up the number of reported decisions has dropped by 40% in the last several years. Could it be that cases are being filed for some reason other than a need to have a court decide?

What about the PTO? Do a search for Apple, Inc. or Kelloggs at the Trademark Trial and Appeal Board. You'll find over 100 pending oppositions, cancellations or requests for extensions of time to oppose. Kelloggs filed 55 opposition actions in 2009 alone. But EVERY ONE of these supposedly infringing trademarks had cleared the PTO examination process. Can that process be so deeply flawed? Are the blue bloods really forced to file so many actions to prevent their rights from eroding?


Or could it be that some brand owners want to build legal rights using the legal system instead of the marketplace. Or could it be that the Internet has created resale headaches of enormous proportions for brand owners who don't want any such secondary sales. Or could it be that without using trademarks as a barrier to entry, its just too darn easy for David to take on Goliath?

I may not have a clue as to why. But something has emboldened or forced some brand owners to instruct their legal handmaidens to engage in a course of conduct that cries out to be understood using one word. Bully

Sarah Palin Couldn't Do It. Jimi Hendrix Couldn't Do It But Tavern on the Plaza Roused The Trademark Troll From His Slumber

When I heard that the bankruptcy trustee for TAVERN ON THE GREEN in NYC was bitching about TAVERN ON THE PLAZA in Indianapolis my first thought was: WHY DON'T THESE SLAM DUNK CASES EVER COME MY WAY?? Jealousy thy name is trademark law.

The battle over the world famous TAVERN ON THE GREEN name, for restaurant services, has been raging for several years. Two presidential candidates one real, one a buffoon have weighed in on this topic. As matters now stand NYC owns the name. Some value it at $19 million dollars. But Mayor Bloomberg has hinted that the name may never again be used on a restaurant in NYC. Other creditors are still challenging NYC over ownership of the name.

Against this backdrop, a brand new J.W. Marriott hotel recently opened in Indianapolis. The hotel was not built by Marriott but rather by a successful Indiana real estate development company. As part of their final marketing plans they sought to federally register the term TAVERN ON THE PLAZA for an outdoor patio restaurant set to open in the Spring of 2011. In doing so, they apparently raised the alarm bells at the law firm that is serving as the trustee for the bankrupt estate. This law firm fired off a cease and desist letter to the Indiana company. Of course you can see the obvious conflict; TAVERN ON THE GREEN/TAVERN ON THE PLAZA- with nobody able to claim rights in the term tavern. You can't? Neither can anyone else. Especially Hoosiers!

So what did the Indiana folks do? They went on offense and filed a declaratory judgment action against the trustee in bankruptcy. Well let's see there are only about a million "tavern on the's..." in the US. My quick check unearthed several other taverns on several other plazas in the United States. To my utter amazement the electronic phone directory contains a listing for a TAVERN ON THE GREEN restaurant in the Indianapolis metropolitan area!

But, in one sense I can understand the trustee's position. Surprising the United States Trademark Registry had no other entries for TAVERN ON THE... except the two in dispute. If I were fighting over the name TAVERN ON THE GREEN and it suddenly appeared as if the J.W. Marriott Company might( emphasis on might) be adopting the name TAVERN ON THE PLAZA for all Marriott restaurants I might take some action. I would like to think that that action would be a much better investigation of the underlying facts, combined with a much more rigorous analysis of whether GREEN and PLAZA are legally distinct.
As I said before "Why don't I ever get these cases???"