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I wrote this post seven years ago. Not much has changed. There is more awareness of trademark bullies. But there are still more trademark bullies. There are still lawsuits that cost ten of millions of dollars, and companies willing to try to out-litigate and out-spend each other regardless of the law or the facts at hand. Most important, the lessons at the bottom still ring true:

  • Protect your intellectual property, it may be incredibly valuable and if someday challenged it could mean everything to your business
  • Get good, reasonable counsel to work with you to protect your intellectual property
  • poor decisions about enforcing your rights, or sending out letters that will be fodder for media and the blogs may damage your intellectual property and your brand far more than they ever could have strengthened it

Intellectual Property – so valuable and so broken

Posted by ipelton on: August 17th, 2010

A few recent cases illustrate why intellectual property is so valuable to businesses, and why the system for protecting and enforcing intellectual property rights is far from perfect:

  • YouTube recently won its case against Viacom regarding copyright infringements (although it will of course likely continue on in appeals). The case went to the core of what YouTube is – videos posted from a variety of sources.  YouTube was purchased by Google for more than $1 billion in 2006.  The case was obviously critical for YouTube to defend.  It has been reported that Google has spent more than $100 million to defend the case!  But a system where in the parties spend 100’s of millions of dollars in any case (remember, Viacom has expensive lawyers and the appeal fees will now begin) can be made better.  Do you have any suggestions?
  • MGA, maker of Bratz dolls, has been defending its intellectual property case with Mattel for years and won the last round (again, appeals likely). MGA’s legal fees: also more than $100 million.
  • Subway attempts to own rights to FOOTLONG name for sandwiches. They even sent a cease and desist letter to “Coney Island Drive Inn, a restaurant in Brooksville, Florida, has been selling 12-inch hot dogs — the restaurant calls them “footlongs” — for more than 40 years.” Listen to NPR  story for more; also see my prior blog post about about Subway’s efforts.
  • FBI (yes, that FBI), sends cease and desist letter to Wikipedia regarding their use of the FBI logo in reference materials about the FBI.  Story here.  FBI counsel’s letter here; response here.  Wikipedia page here (no doubt the page has receive far more traffic since this incident was reported than it would have otherwise over the next 10 years combined).  FBI claims that Wikipedia was violating federal statute, but was selectively quoting from that statute and was (in my opinion) misconstruing its intent.

These recent incidents demonstrate that intellectual property is extremely valuable to businesses but that good counsel may be hard to find. And any system that allows the parties to spend tens of millions of dollars in legal fees on a single dispute – no matter how valuable the intellectual property – needs improvement. While I’m sure the lawyers did a great job, when billing by the hour (I don’t know that these attorneys were, but it has not been reported otherwise) the attorneys do not have proper incentive to find the most efficient solution.  What about a fee agreement in which the lawyers get paid MORE if the case gets settled or resolved QUICKER with less work (and with the client’s objectives met)? Those types of agreements do exist, they are just not common yet.  But they provide win-win scenarios for clients and attorneys and should be explored.

Lessons: Protect your intellectual property, it may be incredibly valuable and if someday challenged it could mean everything to your business. Get good, reasonable counsel to work with you to protect your intellectual property – poor decisions about enforcing your rights, or sending out letters that will be fodder for media and the blogs may damage your intellectual property and your brand far more than they ever could have strengthened it.

This appears to be a new scam. EUPAT, with an address in Washington, DC and an official government looking form. With a cost of $1760.00 (or 1760,oo $) that gets you absolutely nothing of value. Certainly not of value for trademark legal protections in the United States.

What a joke: “for the publication of the trademark in the internet” it states on the header of the form!

Here is language from their webpage, which makes little if any sense (and comically misspells ‘intellectual’):

Patents, trade marks and other intellectual property rights are recorded as separate fields. There are several web pages for each intelectual property that describe this issue, as well as various organizations involved in intellectual property registration, whether in the U.S., Europe or other part of the world. The actual registration process is quite complicated, preceded by thorough search operations, whether an intelectual property is not already registered. Hence, there is the EUPAT Database, which uponfee, enables users the detailed access to the registered patents and trademarks list.

You can see their ‘terms and conditions’ here: http://eupat-register.com/files/gtc_eupat.pdf

Will the USPTO and FTC take action against them promptly? Let’s hope.

I love a good cup of coffee in the morning (and sometimes in the afternoon). New York has many good coffee shops. When I visit New York, I can’t resist getting a bagel. The bagels in New York are superior. Maybe its because they have so much more experience with bagels in NYC, maybe its the water, maybe its is because I’m away from home.

A few months ago, I discovered a wonderful bagel shop around the corner from my hotel in midtown. It was great. As soon as I arrived back in Manhattan earlier this month, I was looking forward to waking up the next morning and getting a bagel from this wonderful shop. But I couldn’t remember name. I remembered what the store looked like. I remembered that it had a very bland name.

So I searched on my phone on Google Maps for bagels nearby. Countless options came up. None of them sounded right. I couldn’t remember the name, and I couldn’t remember what street it was on. I was literally stumped.

As I spent the day in different parts of midtown, I would occasionally check Google Maps and search bagels to see if a name popped up that sounded like the store I remembered.  I checked once.  A few blocks away, I checked again.  Finally, it came up – Best Bagel & Coffee.  No wonder I couldn’t find it!

Even if I had known the name, it might not come up. Do you know how many bagel stores want to appear in the search results when you look for “best bagel new york”?  All of them!

A quick search right now shows these top three listings:

Best Bagel Shops in NYC – Thrillist

Jun 14, 2017 – Tompkins Square Bagels. East Village. Bagel Oasis. Fresh Meadows. Sadelle’s. SoHo. David’s Bagels. Stuy Town. Terrace Bagels. Windsor Terrace. Russ & Daughters. Lower East Side. Brooklyn Bagel & Coffee Co. Astoria/Chelsea. Best Bagel & Coffee. Midtown.

Where to find the best bagels in NYC, at delis and bakeries – Time Out

Nov 23, 2016 – Bagel Pub. The Park Slope bagel counter specializes in hand-rolled, kettle-cooked bagelsin 17 varieties (cinnamon raisin, pumpernickel, garlic), which you can trick out with flavored cream cheeses (mixed berry, guacamole), smoked fish or with those corner-deli staples, bacon, egg and cheese.

The Best Bagels In NYC: Gothamist

Mar 17, 2016 – I was teethed on H&H Bagels, and it’s no secret that the heartbreak I experienced when my beloved bagel shop shuttered in 2011 was worse …

Best Bagel & Coffee, does eventually show up in the listings. But it is not easy.  And with such a bland name, I wouldn’t normally even be sure if that was the same place I had been to and enjoyed.

The USPTO records tell the same story: there are 7 live trademark registrations with “BEST” and “BAGEL” in the name, including BAGEL BEST, BEST BAGELS IN TOWN, BAGEL’S BEST, and BESTNEWYORKBAGEL.COM logo.  There are more than 20 companies with USPTO trademark registrations featuring “BEST” and “COFFEE” in the name.

In short, Best Bagel & Coffee has great bagels and great coffee.

But it’s brand name is far from the best, both in terms of legal protections available and in terms of practical use for its customers.

Domain name scams continue

Posted by ipelton on: August 7th, 2017

I received this today via email, and several clients have contacted me recently regarding similar solicitations. This is almost certainly a phishing scam. I  suggsest ignoring it.

 

Dear Sir/Madam,

We are a domain name registration service company. Today we received an application from XXXXXX International, and they applied for registration of tm4smallbiz as their Brand Name and some top-level domain names ( TLDs). The main bodies of these domains are the same as yours. We are not sure whether your company has any relationship with that company.

Now we need to confirm whether the application is authorized by your company. Please let me know as soon as possible so that we can deal with the problem in time. We are looking forward to hear from you.

Regards,

XXXXXXXXXXX
Tel: 0086-551-6349-1193
Fax: 0086-551-6349-1192
Building 2,Zhidi Square,No.288,Huaining Road,Hefei Anhui

TPAC Meeting Summary – July 28, 2017

Posted by ipelton on: August 4th, 2017

I was unable to attend last week’s meeting of the Trademark Public Advisory Committee. However, our firm attended the public meeting and obtained a copy of the slides from the presentations. See below.

Discussion topics included:

  • TMNG / IT enhancement progress
  • Pendency and performance
  • Upcoming rulemaking regarding an expedited cancellation proceeding on grounds of abandonment and/or nonuse
    • comments on on 82 FR 22517 due by August 14
    • Stakeholder roundtable will be held on September 25
  • USPTO budget forecasting

Trademark Public Advisory Committee – meeting slides July 28, 2017 by erik5733 on Scribd