Trademark Scams Aplenty

Trademark Scams Aplenty

by Susan Basko, esq.

Trademark scams are harming the work of the U.S. Trademark Office, as well as harming legitimate Trademark lawyers, and duping and defrauding trademark applicants. If you want to apply for a trademark, how can you spot a scam?  This is fairly easy -- if you are using an automated service, instead of a trademark lawyers, you have probably been taken in by a scam.  If you are not conferring directly with a real live licensed lawyer, it is probably a scam.  If it appears to cost too little, it is probably a scam.  If it arrives in the mail demanding money, it is definitely a scam.  Below, we will look at a few of the biggest trademark scam/ fraud situations going right now.  

First, I recently received this Alert from the U.S. Trademark Office.  


Trademark Alert.  U.S. lawyers: Beware of solicitations asking to use your bar credentials

The USPTO recently learned that U.S. attorneys are again receiving emails from unlicensed individuals offering to pay to use the attorney's bar credentials in trademark filings  These solicitations are a direct attempt to circumvent the U.S. counsel rule.

Although we believe that only a small percentage of practitioners are engaging in this practice, the USPTO would like to remind U.S. attorneys that such an arrangement would likely be aiding the unauthorized practice of law and also a violation of federal rules, including the USPTO's Rule of Professional Conduct, 37 C.F.R. Part 11.

Scams can adversely impact the integrity of the trademark register.  If you receive a solicitation asking to use your bar credentials, please forward it to TMScams@uspto.gov.

Explained: The US Trademark Office requires any foreign entity to hire a U.S. lawyer to conduct any work with the U.S. Trademark Office, including trademark applications and the certification process.  In addition, the U.S. Trademark Office only allows licensed U.S. lawyers to represent any other person or entity before the Trademark Office.  There are non-lawyers who engage in trademark registration scams -- and thus, they try to "borrow" credentials from lawyers.  However, as you can note in the warning above, any lawyer agreeing to this is likely to lose their law license and possibly face criminal charges.  

ANOTHER HUGE TRADEMARK SCAM involves automated websites that claim to be registering trademarks for people, often at unrealistically low prices.  This whole practice started several years ago, and this is how it works:  Only a U.S.-licensed lawyer can register a trademark for any other person or company,  So, these automated websites claim that it is the applicants themselves who are registering their own trademark.  But, this makes no sense.  Trademark registration is a process that takes at least a year, and involves interaction with the trademark examiner.  These trademark website scams also usually charge unrealistically low prices.  The registration fee itself is $250 - $350 per class of goods or services.  On top of that, there is the work of a trademark lawyer for at least a year.  So, when you do a google search and up top are listings for companies charging $49, $59 or $69 for trademark registration, you know it is a scam.  It could not possibly cost that low when the required application fee itself is several hundred dollars.

I saw one trademark scam ad touting a "Turnaround Time of 72 Hours." This is not even slightly possible.  After filing an application, it waits for about 4 months to be assigned to a Trademark Examiner. In 72 hours, the application may (or may not) show up on the USPTO Database as "LIVE."  "Live" is used to denote trademarks that are in the application process that have not yet been declared DEAD, as well as those that have been successfully registered.  Perhaps the Trademark Office should make a different designation for trademark applications that are still in the application process -- for example, "Application Pending."  Referring to fraudulent trademark applications as "LIVE" facilitates that fraud.  The scam companies can send their customers a fake trademark certificate and point to their trademark on the USPTO database with the word "LIVE" next to it.  If the scam company takes no further action on a doomed application, as things are now run at the USPTO, that "LIVE" designation will remain for a year.  That feeds the fraud and enables it.  

Tim Lince of World Trademark Review did an absolutely brilliant investigative journalism piece on these trademark scam companies.   Muhammad Burhan Mirza of Digitonics Lab was arrested for running many of these trademark websites.  He and nine others were charged with fraud and money-laundering for running sites that claimed to be doing trademark registration, logo creation, ghostwriting services, etc.  

One of the many fraud websites was one called USPTOTrademarks.com  Obviously, that name would fool a lot of people into believing it was legit.  "The website (‘usptotrademarks.com’) uses the USPTO’s logo and colour scheme, while its About Us page claims to be “a project initiated by experienced lawyers and technologists” with “12 years of experience”." The website claims to be in "San Jose, California," but the operators were arrested in Pakistan.  How did it work?  They simply sent the fake Trademark certificates to the applicants. "Even more concerningly, the report alleges that the company gave around 70% to 75% of clients “fake/fabricated” USPTO trademark certificates as part of the scam." 

Despite the flurry of arrests and allegations of fraud and extortion against these websites, some of them are still online to this day, such as USPTO Trademarks, a screen shot taken just now, shown below.  The entirety of U.S. Intellectual Property law is at stake -- at this juncture, the U.S. needs to step up and shut down these kind of scams with the same ferocity it uses to shut down kiddie porn sites.  Look at the site below-- could you blame people for being tricked into thinking this was legit?  

 

The U.S. Trademark Office has many times stated that it is not within their allowed activities to engage in prosecution of frauds or scams -- though the office does cooperate fully with authorities.  

This proliferation of scams harms the public, as well as harming the USPTO.  The only solution I can see that would work would be to require every trademark application to be filed by a licensed attorney and to have that attorney vouch for the legitimacy of the application and of his or her intent to conduct the full application process.  Federal courts require this of lawyers filing lawsuits.  It is time to do this with trademarks.  The trademark office is inundated with thousands of these fraudulent trademark applications, according to a follow-up article by Tim Lince of World Trademark Review (WTR).  In February of 2021, World Trademark Review published a list of the trademark applications made by 6 of these companies.  There are 81 pages of these trademark applications, with about 27 listed on each page!  The list gives the status of each application. Applying for a trademark is a process that takes at least a year and has various phases to it.  

If an application is going to fail, it usually takes at least a year from the date of filing for it to go DEAD on the USPTO database.  That's because a trademark application is filed and then sits for about 4 months waiting to be assigned to an Examiner.  If the Examiner issues a Nonfinal Office Action, the applicant is given 6 months to file a response.  If no response is filed or an incomplete or unsatisfactory response is filed, as would often be the case with an application not being tended to by a trademark lawyer, then it will go dead, usually several months after the 6 months deadline.  This means that applications destined to fail are on the USPTO Trademark Database as "LIVE" for about a year.  This harms and affects applicants who are trying to register trademarks that may conflict with the trademarks on the doomed applications -- their applications will be  put on hold to wait for the earlier-filed application to clear or go DEAD.  

This massive influx of trademark applications not properly made causes a huge amount of needless work for Trademark Examiners.  The Examiners are required to respond to each application as if it were legit.  Recently, however, the Trademark Office created a rule that short-circuits some of this.  The office has begun requiring an email address of the applicant.  The fraudulent companies have been in the practice of supplying their own email, probably to keep the applicant from finding out their application is not being handled properly.  After all, if a company is sending fake Trademark Certificates to 75% of its customers, the company does not want its customers in contact with the Trademark Office, where they may be alerted to the scam.  By having the Examiner request the trademark applicant's email address early on in the process, the Examiner can halt the process early on without progressing to the painstaking efforts of reviewing the application and writing a Nonfinal Office Action.

Google ads is at least partly to blame for this fiasco.  The fake and fraudulent trademark companies buy up key words and pay to have their ads at the top of the list when a person google-searches for trademark registration.  The ads offer very low prices, quick turnaround times -- none of which comport with the reality of trademark applications.  But, those being suckered into using these sites cannot be blamed -- the site says "USPTO Trademark," looks legit, etc. The REAL website of the US Patent and Trademark Office , USPTO.gov, to be truthful, is a cluttered mess.  It would be hard to blame the public for being attracted to a website that claims to be dealing in trademarks and makes it look as if the process is going to be easy, smooth, well-platformed, and affordable.  Should the US DOJ stop Google from running ads for fraudulent companies?  Better asked, WHY is the US DOJ allowing Google to run ads for fraudulent companies, companies that harm and make a mockery of the U.S. Trademark, Patent, and Copyright Offices?

The Real USPTO website -- USPTO.gov  - is cluttered, incomprehensible, has a search engine that delivers poor results, and is not in any way user-friendly.  A person wants to register a trademark, and if they do somehow manage, against all odds, to find the real USPTO website, they find up front a very dated photo of Jim Henson and the Muppets, lots of information on Covid-19, and cluttered verbiage with hundreds of links.  This ludicrously poor website design drives people to using fake and fraud websites that at least appear to offer streamlined solutions.  People get lured by absurdly low prices that, in fact, do not even cover the actual trademark registration fees.  Getting a trademark is like getting a university degree -- you can either pay a lot of money and spend a lot of time and work and get a genuine trademark and the certificate that goes with it, or you can pay $69 and fill out an online application and get a fake certificate.  

Screen shot of half of the front page of the real USPTO Website, below.  


My suggestions on how to deal with the current mess at the USPTO:

1. Require all trademark applications to be made only by licensed lawyers.  Most successful applications are already made by licensed lawyers, so all this would really do is get rid of the fraud applications and the nonsensical or poorly-made applications.  Have a list of lawyers who practice before the Trademark Office, and publish it, so the public knows how to find a real trademark lawyer.

2. Have the DOJ take aggressive action against fraudulent Trademark websites and companies, domain name ownership that confuses the public, etc.

3.  Have a public awareness campaign on what trademark is, how much it costs, and the rather complex process involved in getting a trademark.

OTHER TRADEMARK SCAMS.  

Trademark applicants, even those making legitimate applications, are besieged by mail from fake companies demanding payment for fake trademark services.  The mail usually looks like bills and comes from addresses that include company names and addresses that sound somewhat legit.  These bills demand payment of hundreds, or usually thousands of dollars.  I have come across people online who have been paying hundreds of dollars each month to "maintain" their trademark.  These people have been duped by realistic-looking bills.  IF.. if these people had registered their trademarks using a real lawyer, they could ask the lawyer about the bill, and the lawyer would tell them, "No, that is fake.  Don't pay it."  

The U.S. Trademark Office is very well aware of these scams.  The Office, unfortunately, refers to them as "misleading notices."   "Misleading notices" is far too soft a term for fake bills that cause people to pay thousands of dollars to a scam company.  "Beware of all types of offers and notices not from the USPTO. In March 2017, the operators of a private company—the Trademark Compliance Center—were convicted of money laundering in a trademark renewal scam." https://www.uspto.gov/trademarks/protect/caution-misleading-notices  

The USPTO provides a list of the names of some of the companies that have been sending out fake bills and notices demanding money.  You can click on any of the links to see actual examples of the misleading notices.

Solicitations originating within the United States

Solicitations originating outside the United States


This video gives additional useful information about these scam solicitations that are sent to most everyone that applies for a trademark, whether or not the applicant uses a trademark lawyer.

Justice and Justin Bieber



Justice and Justin Bieber

by Susan Basko, esq.

Justin Bieber is being sued by the French electronic music duo called Justice.  Justice registered the trademark on the left, in the French trademark system, but not in the U.S.  The Justice duo claims that the cover of Justin Bieber's latest album, called Justice, seen on the right, infringes upon their copyright.  

Let's look at why this claim is not likely to succeed.  There are many reasons.  First, Justice did not register their trademark in the U.S.  Second, Justin Bieber has not (yet) filed a trademark on "Justice."

Third, "justice" is a generic term, and this electronic duo has no hold or control over the name.  If their name were unique, such as "Megadeth" they might have some legit claim over the word.  As of now, there are 1014 live trademarks in the US trademark system that contain the word, "justice."

Fourth, Justice claims that Bieber's design on the word, "justice" is too similar to theirs, because they claim the "t" is elongated to create a Christian cross.  Look at the two designs.  Justice uses a graffiti writing style, with little arrows coming off the ends of the letters.  Bieber uses a totally different typeface, a very sleek, chunky, modern sans serif lettering. 

The overall line of the lettering on the Justice trademark swoops down and then up again.  Bieber's lettering has a straight bottom line.  In fact, Bieber's letter "t" is not elongated and has the same bottom line as the rest of his letters.

If we were discussing copyright, which is different from trademark, we would note that font styles do not have copyright.  Also, titles of albums do not have copyright.  Also, one cannot copyright a single word.  Also, a common symbol such as a cross does not have copyright. 

Then there is the idea of consumer confusion.  I doubt any fans of Justin Bieber's music have ever heard of the electronic duo, Justice.  Justice's fans have likely heard of Justin Bieber, but they are not likely to confuse these two highly divergent music artists.

I did a search of the US Trademark database to find trademarks that incorporate the word "justice" and also a design of a cross.  I found a short list, and most of them are dead.  

Then, I looked at each of these. I found three that had any possible similarity to the Justice trademark or to Justin Bieber's album cover.  This is the first -- the Medical Justice League, with a crest including a cross.  There is no similarity to either Justice's trademark or Justin Bieber's album cover design.


Next, there is an abandoned trademark using the word "justice" and a cross. Again, not similar.


Third, there is a live trademark for insurance claims that is uses a cross and the word, "justice."  It is the most similar to the French Justice music trademark and to Bieber's album cover design.  Even still, it is not similar to either.  The point here is that anyone can use the word "justice" in a trademark, along with a Latin Cross, and this does not mean it infringes.


I've read that Justin Bieber has a "Justice" clothing line planned.  He should probably get busy and file a trademark on that, before someone beats him to it.

There's another issue some people are complaining about.  Justin Bieber used some wording from Dr. Martin Luther King, Jr., as lyrics in some of his songs.  He did so with the blessing of the King family.  There is a triple blessing to Bieber using MLK's words as lyrics.  The family/ estate holds the copyright on many of Dr. King's famous writings and speeches.  They use the copyright to protect the integrity of the writings, as well as to make money for the family and estate.  This is most helpful since Dr. King died very young and was therefore not around to support his family.  His words lived on, and protected by copyright, have helped support the family.  

Some people have complained that Justin Bieber named Dr. Martin Luther King, Jr as "co-writer" on at least one song.  This is legally a correct thing to do.  The lyrics are written by MLK and therefore, he is a co-songwriter.  This also means that MLK's family or estate is entitled to publishing royalties on the song.  That could add up to quite a bit of money for the family.  

Justin Bieber is not usurping or misusing the MLK name, he is introducing MLK's words and ideas to a new generation.  He is helping spread MLK's ideas about justice.  By doing so, Justin Bieber is helping the MLK family and estate to make money.  By doing so, Justin Bieber is promoting justice in ways that are available to him as a very famous music artist.  


Tim Pool, Chris Pool, and the Subverse Trademark


Tim Pool, Chris Pool, and the Subverse Trademark
by Susan Basko, esq.


Disclaimer: I have had interpersonal dealings with Tim Pool, but do not consider myself biased for or against him in regards to his dealings with his brother, about which I know little. That is not the main topic of this blog post.

Tim Pool, also known as TimCast, and his older brother, Chris Pool, also known as Reactor, have been waging a family feud online.  The Brothers Pool, or the Pool Boys, as they might be called, are Tech Bro siblings from Chicago.  Tim got his start livestreaming Occupy Wall Street (OWS) and subsequent protests and moved on to reporting and entertaining with his own opinion Youtube channel and Twitter.  Chris is known as a tech innovator and content creator.  The feud involves Chris accusing Tim and his two business partners of stealing his business, Subverse, out from under him.  Chris is making the rounds of Youtube talk shows to give his side of the story.  Chris is raising money via gofundme to hire lawyers to sue his brother.  Tech geeks and Youtube show hosts are taking sides or remaining neutral while splashing into the deep end with The Pool Boys.

 I have thoughts on this whole Pool Boys debacle, but those are not the topic of this article.  This article is about the trademark for Subverse, which is part of the intellectual property that Chris says Tim stole from him.  That's not even the topic of this article.  The topic of this article is the bizarre situation surrounding Tim's application for the trademark on the name, Subverse.  This is where we separate the legal geeks from the regular folks, because this is a playground for the legal geeks, especially those with an interest in trademarks.

The saga starts out with Tim Pool, acting on his own without a trademark lawyer, which is always a bad idea, filing a trademark application on the word, "Subverse," on the following categories of services:

 IC 041. US 100 101 107. G & S: Entertainment media production services for the internet; Entertainment services, namely, providing online video games; News reporters services; Providing entertainment information via a website.

 Note, the services Tim claims are all under category 41, which is entertainment.  He is claiming Subverse is a trademark used to identify media production services, video games, news reporting, and entertainment information on a website.  

 Tim applied to own this Subverse trademark in his own name, not the name of any company, but noted that he does business as Timcast. He filed the application on April 8, 2019.  The application states that the trademark has been in use to identify the services since April 4 of 2015.  If I am not mistaken, that would have been when Chris Pool owned and ran Subverse.  

 That application went along without a hitch, at least for a while.  The Trademark Examiner, who is a trademark attorney working for the United States Patent and Trademark Office (USPTO) found no conflicting trademarks.  The Examiner sent the trademark for publication in the official gazette, where it would be published for 30 days.  During those 30 days, anyone that thought the trademark would infringe upon or conflict with their own or that they would be damaged by it, gets that opportunity to file a letter complaining to the USPTO.  

 And sure enough, an objection letter came in to the USPTO from a company called Zovolt Limited limited company (ltd.) UNITED KINGDOM 35 Connaught Avenue Great Yarmouth, NOR UNITED KINGDOM NR317LU.  Here, we'll call them Zovolt.

Now, let's look at this application from Zovolt.  Tim Pool filed his application on April 8, 2019.  Zovolt filed its application on August 13, 2019, about 4 months after Tim Pool's application.  However, Zovolt claimed it has precedence under 44(e), which is a US Trademark rule that allows applicants to claim they came first if they have a valid foreign trademark registration or application, from a foreign nation that is in treaty with the U.S.  Zovolt claimed it had priority date of February 14, 2019, about two months earlier than Tim Pool filed his application.  However, Zovolt did not provide the USPTO with a copy of any such registration, as required by the rule.  The Zovolt application listed a UK application number, but did not provide a copy of that registration.  The USPTO issued an Office Action (letter) on December 1, 2019, telling Zovolt to provide a certified copy of their alleged UK registration.  Zovolt has 6 months to respond.  That gives Zovolt until June 1, 2020 to respond and provide the certified copy of the UK registration.   

 NOTE:  On the UK IP Office website, I did find an application by Zovolt for a trademark on Subverse dated February 2, 2019, as claimed in the USPTO application. However, that application is only for goods and services in Classes 9 and 42, mainly related to computer programming and computer software, and not for Entertainment, which they added in the US application.  The services claimed in the UK application seem significantly different from those claimed in the US application. 

 The trademark application filed by Zovolt is a huge mess, aside from claiming priority with a foreign application but providing no copy of it.  The Zovolt application is made on a 1B basis, which means an "intent to use" basis.  This is unlike Tim Pool's application, which is made on a 1A basis, meaning he says he is already providing the three or four services he listed on his application.  In contrast, Zovolt says it plans to start providing a whole list of services.  Clue in here -- this is how you know when people applying for a trademark have absolutely no clue what they are doing -- the Zovolt application lists dozens of supposed services, many of which are redundant of each other.  The USPTO Trademark Examiner sent an Office Action rejecting most of these listings, stating that they were repetitions of each other and needed to be combined.  The Office Action gave Zovolt a deadline till June 1 to combine its claimed uses - or the USPTO will do it for them.  I will post the list of services Zovolt is claiming -- later below -- because it is so ridiculous and long, it will take up too much space.

 When a trademark applicant makes a 1B (intent to use) claim, they get a certain number of months in which to actually start providing those goods or services and using the trademark to identify them.  The applicant then must file a Statement of Use (SOI. Failure to file a SOI or ask for an extension of time means the trademark application goes DEAD.

 Zovolt filed an Objection when it saw Tim Pool's application go to Publication.  Tim Pool's application has thus been suspended until there is a resolution in the Zovolt application.  That resolution should come shortly after June 1, 2020, when Zovolt either does or does not file a certified copy of its UK registration.   

 The mystery deepens.  The Trademark Examiner working on Tim Pool's application, found no trademarks conflicting with his use of the trademark Subverse.  The Trademark Examiner working the Zovolt application, on the other hand, found that Zovolt's use of Subverse would conflict with already existing trademarks on the words  “SUBVERT”, “SBVERSL”, and “SUBVERSION”, as well as on Tim Pool's applied-for trademark on "SUBVERSE."  All of these existing and applied-for trademarks are on categories of goods and services identical or very similar to some of the hilariously many categories that Zovolt claims it will soon be engaging in.  

 If Zovolt's trademark on Subverse would conflict with existing trademarks on Subvert, SBVERSL, and Subversion, how was it decided that Tim Pool's use of Subverse did not conflict with those same existing marks?  Thus are the mysteries of the USPTO.  Maybe the Pool Boy gets the Home Boy advantage or the "He is actually doing these things" advantage.

 The application filed for Zovolt is a giant mess.  One sign that people have no clue what they are doing in trademark is when they file an application for an excessive number of categories.  In this regard, the Zovolt application ought to win an award for most ridiculous application ever.  Below are the categories Zovolt claims, all as "intent to use":

 Here, (Zovolt) goods and services are identified as follows:  

 Class 009:  3D animation software;3D computer graphics software; AI software; Animated films; Animation software; Application software for mobile devices; Application software for mobile phones; Application software for smart phones; Application software for social networking services via internet; Artificial intelligence software; Augmented reality software; Augmented reality software for simulation; Augmented reality software for use in mobile devices; Augmented reality software for use in mobile devices for integrating electronic data with real world environments; Communication software for connecting computer network users; Communications software; Computer application software; Computer application software featuring games and gaming; Computer application software for mobile phones; Computer application software for mobile telephones; Computer application software for streaming audio-visual media content via the internet; Computer application software for use with wearable computer devices; Computer e-commerce software to allow users to perform electronic business transactions via a global computer network; Computer game cartridges; Computer game cassettes; Computer game discs; Computer game programmes; Computer game programs; Computer game software; Computer game software, downloadable; Computer game software downloadable from a global computer network; Computer game software for use on mobile and cellular phones; Computer game software for use with on-line interactive games; Computer game software, recorded; Computer games; Computer games entertainment software; Computer games programmes downloaded via the internet; Computer games programmes downloaded via the internet;Computer games programmes for simulating financial securities trading;Computer games programmes;Computer games programs; Computer games programs downloaded via the internet;Computer games programs recorded on tapes;Computer games programs;Computer games software; Computer gaming software; Computer graphics software; Computer programmes for interactive television and for interactive games and/or quizzes; Computer programmes for playing games; Computer programmes stored in digital form; Computer programs for enabling access or entrance control; Computer programs for playing games; Computer programs for pre-recorded games; Computer programs for processing digital music files; Computer programs for the enabling of access or entrance control; Computer programs for using the internet and the worldwide web; Computer programs for video and computer games; Computer software downloadable from the internet; Computer software downloaded from the internet; Computer software for entertainment; Computer software for facilitating payment transactions by electronic means; Computer software for mobile phones; Computer software for the administration of on-line games and gaming; Computer software in the field of electronic publishing; Computer software supplied on the Internet; Computer software that permits games to be played; Computer software to enable the provision of electronic media via the Internet; Covers for digital media players; Covers for smartphones; Covers for sunglasses; Displays for smartphones; Downloadable applications for use with mobile devices; Downloadable computer game programs; Downloadable computer game software; Downloadable computer game software via a global computer network and wireless devices; Downloadable computer games; Downloadable game related software applications; Downloadable interactive entertainment software for playing computer games; Downloadable interactive entertainment software for playing video games; Downloadable software applications; Downloadable video game programs; Downloadable video game software; Electronic game programs; Electronic game software; Electronic game software for handheld electronic devices; Electronic game software for mobile phones; Electronic game software for wireless devices; Electronic publications, downloadable, relating to games and gaming; Encoded smart cards; Entertainment software; File sharing software; Gambling software; Game development software; Game programs for arcade video game machines; Game software; Games cartridges for use with electronic games apparatus; Games software; Games software for use with computers; Games software for use with video game consoles; Gaming software; Gaming software that generates or displays wager outcomes of gaming machines; Head-mounted display apparatus; Head-mounted holographic displays; Head-mounted video display apparatus; Head-mounted video displays; Headsets for virtual reality games; Interactive computer game programs; Interactive entertainment software; Interactive entertainment software for use with computers; Interactive entertainment software for use with personal computers; Interactive game software; Interactive graphics screens; Interactive multimedia computer game program; Interactive multimedia computer game programs; Interactive multimedia computer games programmes; Interactive multimedia game programs; Interactive multimedia software for playing games; Interactive video game programs; Interactive video software; Labels with integrated RFID chips; Labels with machine-readable codes; Laptop bags; Laptop carrying cases; Laptop covers; Laptop sleeves; Machine learning software; Media software; Media streaming software; Mobile apps; Mobile app's; Mobile phone covers  

 Class 041:  Entertainment Services; Organisation of games and competitions; Arranging and conducting of competitions; Electronic desktop publishing; Games equipment rental; Layout services, other than for advertising purposes; Providing online electronic publications, not downloadable; Electronic game services and competitions provided by means of the internet; Organization of electronic game competitions; Providing electronic publications from a global computer network or the Internet, not downloadable; Multimedia publishing; Publication of printed matter in electronic form on the Internet; Publication of printed matter; Video game entertainment services; Provision of online computer games; Publication of computer games; Audio, video and multimedia production, and photography

 Class 042:  Development of computer hardware for computer games; Design and development of computer game software; Website design services; Website design consultancy; Design, creation, hosting and maintenance of websites for others; Hosting of digital content, namely, on-line journals and blogs; Providing temporary use of non-downloadable computer software for use in the creation and publication of on-line journals and blogs

 Further below, you can find the USPTO Office Action (letter) telling Zovolt what replies it must give by June 1, 2020.

 FORETELLING THE FUTURE: What is likely to happen?  Let's look at different possible scenarios.  

 If Zovolt DOES NOT file any Response by June 1, its application will go DEAD and Tim Pool's application will proceed.  Then, very most likely, Tim Pool will get a trademark on Subverse, notwithstanding that there are supposedly conflicting existing marks on Subvert, SBVRSL, and Subversion.  If that topic does come up as a new Office Action with a denial, Tim can file a Response in which he seeks to differentiate the words or the uses.  

 
If Zovolt DOES file a Response to the Office Action by June 1, we assume that Response will contain a certified copy of a prior-filed UK trademark registration.  If that happens, then Zovolt's application will be considered first in line before Tim Pool's application.  Zovolt will still need to consolidate its listings of goods and services.  Zovolt will also have to differentiate its trademark and uses from those already in use by the owners of the trademarks on SBVRSL, Subvert, and Subversion.  And then -- the biggest challenge of all -- Zovolt will need to start actually providing the goods and services it is claiming it plans to provide -- and file a Statement of Use SOI with the USPTO.  Assuming that Zovolt actually has a UK prior application, and assuming Zovolt can differentiate its trademark and uses from those existing, then Zovolt will have about 18 months from the date of its initial application to be able to prove it is providing that long list of goods and services shown above.  Zovolt's application was filed on August 13, 2019, which would give them till about February of 2021 to start running all those services and file a Statement of Use.

 Thus, it is possible that Tim Pool's trademark application could be suspended until February 2021.  At that time, if Zovolt is actually providing all the services it claims it will, Tim Pool will most likely be shit out of luck, which is the legal term used by lawyers and professionals.

 On the other hand, if Zovolt fails to Respond to the Office Action by Jun 1, 2020, then Zovolt is up a creek without a paddle and Tim Pool will most likely get his trademark.  And if that happens, THEN what happens?  Why, Tim Pool and Chris Pool can battle it out in a feud to rival the Hatfields and McCoys, or they can embrace in brotherly love and divvy things up in a more rational way.

  Whichever way this goes, the Summer of 2020 will be one to watch The Pool Boys and see how they resolve this situation.  By the way, if you've never seen the movie, "The Social Network," right now might be a good time to watch it as a primer in how easily business ownership in a tech business can be created.  

Inventors: Beware of Scams!

Inventors: Beware of Scams!
by Susan Basko, esq.

If you have invented something, you might want to get it patented.  The patent process is difficult and expensive.  And -- it is made more difficult by scammers who are ready and willing to take advantage of you.  This instruction sheet provided by the United States Patent and Trademark Office (USPTO) is quite useful.  Please read it and steer yourself clear of scammers.  If you want to keep a copy of this flyer for yourself, you can download it by clicking the down arrow at the bottom.

Trademarks for Creative People

Trademarks for Creative People
by Susan Basko, esq.

A trademark is a mark that signifies a good or a service that is in commerce.  Most trademarks are a word or a short set of words.  Some trademarks are a logo.  A few trademarks are a sound.  

Federal trademark registration takes at least a year to complete. There are many phases to trademark registration.  The process starts with a good search by a lawyer to see if it is likely that your trademark will register successfully.  When I am registering a trademark, I consider the initial search the most important part! If I decide that a trademark is not likely to register successfully, I will tell this to the client.  If I think it will register successfully, but with some legal wrangling, I also let the client know.  If the trademark is not likely to succeed, I offer to help the client come up with a trademark that is more likely to be successful. If your proposed trademark conflicts with an existing trademark, you won't likely be able to register it, and you might get a cease and desist letter telling you to stop using it.

It is best to have a robust trademark that is unique, creative, original, and all your very own.  A strong trademark helps build a strong business.  Most larger businesses start with one main trademark and then develop and register other trademarks over time.

 The next step is to choose the right category of goods or services in which to register your trademark.  This can be very complicated, with many factors involved.  This is why it is important to use an experienced trademark lawyer. The next step is the application, paying the fee, and uploading "specimens," - which are examples of your trademark in use.  There are lots of very specific rules on what kind of specimens are considered proof for which kinds of goods or services.  The specimen might be a tag or label with the trademark that is attached to the goods for sale.  A specimen might be the trademark used on a website or on a point of sale for a service.

 After the application is completed, we sit back and wait.  Then, after about 4 months, a trademark examiner is assigned to the case.  Then, there will be a series of back-and-forth communications between the examiner and the trademark lawyer.  Sometimes the lawyer has to respond to the examiners "office action" or letter with a legal argument or set of facts trying to overcome the examiner's nonfinal refusal.

 If everything can get ironed out, the trademark will then go to publication for a month, where anyone can object.  If there are no valid objections, a certificate of trademark is issued about 12 weeks after it went to publication.  That's a long process and one filled with details and lots of work, but a trademark is a very valuable asset.

Some of the creative people who should consider registering trademarks are:

Bands or music artists should consider registering trademark on their names if they are playing paying shows or if they have sold a series of sound recordings under their name.  If you have the name trademark registered, your name is protected.  If you get a big recording or touring deal, you won't be forced to change your name (and lose the goodwill inherent in the name) because of fears of confusion with a different group.  Your name will be yours.

Online businesses should consider registering the name of their company and/or the names of their services or features. Twitter and Facebook went to great trouble and expense to get trademarks on their names.  If you start an online business, it is best to consult first before you decide on a name.  That way, you can come up with a name that is original and unique to your company.  Then, your trademarks will be much easier to register.

 Trademarks are a valuable asset.  They signify to your potential customers that the goods or services are authentic and created by you.  A trademark can last the lifetime of the business, as long as it is still being used in commerce.  Think of some of the all-time great trademarks: Nabisco, Kleenex, Clorox, IBM, Apple, Facebook, Twitter, Microsoft, McDonald's, Greyhound.  These trademarks are part of our American life.  Each one of these very strong trademarks signifies to us a set of valuable goods and services, and we expect a certain quality from them.
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