After all these years I am finally getting around to registering various trademarks associated with IPWatchdog. Recently I received a rather official looking notice in the mail from Global Business Option, Inc., which solicited payment of $960 per trademark for publication in the “The Global Trademark and Servicemark Selection of the USA” catalog. Why would I want or need to have my trademarks published in some catalog?
The notice, which at the bottom says that it “is an offer, not an invoice,” stated:
The law considers a trademark to be a form of property. Your above registration provides a notice to others that your described trademark/servicemark is already taken. Our publication contains a depiction of your registered mark, the identification of goods and/or services, year of the registration and owner information as well.
Interesting, because there is no requirement that trademarks be published this way, and if folks were interested in searching and did even a basic trademark search using the USPTO system they would find our pending applications. So the filing of a trademark application and receipt of a trademark already provides notice that the mark is taken. I wonder how many people have fallen prey to this solicitation?
It seems that I am not the only one receiving these notices, and it also seems that Global Business Option is not the only company that is trying to make money selling a publication service that provides no benefit.
Leason Ellis LLP, an intellectual property law firm located in White Plains, New York, recently filed a Complaint against USA Trademark Enterprises, Inc. of Sarasota, Florida, and its principals Timea Csikos and Andras Nemeth. The complaint was filed with the United States District Court for the Southern District of New York, White Plains Division. The case, 12-cv-0620, has been assigned to the Honorable Edgardo Ramos. David Leason, Managing Partner of Leason Ellis, said “by targeting our clients and us, USA Trademark Enterprises has interfered in our business and cast a shadow over the legitimacy of trademark-related communications. In filing suit, we are out to protect our clients, our business, and the integrity of the trademark process from predatory and deceptive marketing.”
The multi-count Complaint alleges that USA Trademark Enterprises has engaged in false advertising and unfair competition by marketing a catalog of trademark registrations, which offers no value because the published information is freely available in the online records of the U.S. Patent and Trademark Office. The complaint alleges that the defendants are further confusing consumers into thinking that the catalog is legitimate by sending unsolicited notices designed to make it appear as though USA Trademark Enterprises, Inc. is an official government enterprise or otherwise affiliated with any entity associated with the trademark registration process.
But would someone believe these types of notices to be official notices that require action? In some states after you file the paperwork to open a corporation you need to publish certain information, and that is absolutely required, so it seems believable that people might reasonably believe these notices to be official, right?
Exhibit 1. After being out of town for several days on a PLI speaking tour when I arrived back home Renee greeted me with a variety of things that needed my attention. One of those things was the above mentioned offer to publish our trademarks. After reading the GBO offer to publish I told Renee, “this is a scam, we don’t need to do this.” She responded, “really?” Renee explains:
I knew we had filed for trademark protection, so when I opened the letter I just assumed that this was a necessary step in the trademark process. I assumed that there was some affiliation between GBO and the USPTO. I thought the fees were quite high, but assumed they were necessary to complete the trademark filing. Had I been in business on my own and not had access to ask an attorney I would have likely paid the fees thinking it was a requirement for issuance of our trademarks.
So how many people have simply paid this “offer” thinking that this was a necessary step in registering a trademark? Probably plenty, and that is a shame. The notice seems to quite clearly imply that publication is necessary, or at the very least an important step to preserving and protecting your trademark property. Is it fraud? I think so. Will it legally be determined to be fraud? We will find out. It is certainly misleading, if you ask me, and those who create these have to know that the reader will be duped into thinking this is either required or at least very important. The truth is that it is neither required, nor is it important at all.
Martin Schwimmer is the lead counsel for Leason Ellis in the case against USA Trademark Enterprises. He is known to many in the industry as the author of the Trademark Blog. Upon filing the complaint Schwimmer said, “our clients are routinely receiving bogus notices from companies like USA Trademark Enterprises. Unbelievably, USA Trademark Enterprises even sent a notice to us when we registered our firm’s logo. They are obviously mining the records of the USPTO and targeting novice trademark registrants who can be mistakenly led to believe that the catalog has any legitimate public notice value.”
It really is almost unbelievable that those who are trying to perpetrate this scheme would send a notice like this to a law firm where one of the partners is the author of the Trademark Blog. I thought it was rather ridiculous that GBO would send me a letter, although any more I primarily do patent work. But seriously, if you are going to try and fly under the radar don’t you think you should be a little more careful about who you send notices to?
Schwimmer added, “We are concerned that U.S. trademark registrants receiving these solicitations have actually handed over money for what amounts to mere public notice services – a benefit already bestowed upon a U.S. trademark registrant as a matter of law. Anyone who has done so should immediately contact competent trademark counsel concerning those transactions. Of course, we are also interested in speaking with them about their experiences as they are likely relevant to our case.”
The complaint seeks an order permanently enjoining the defendants from offering for sale Trademark Publication services or other similar service or product. The prayer for relief also seeks an accounting of “profits pursuant to its unlawful activities,” as well as “punitive damages in view of the willfully unlawful marketplace misconduct of USA Trademark Enterprises…” Treble damages, costs, attorneys fees, pre-judgment interest and “such other and further relief as the Court may deem just and equitable” are also requested.
Of course, as with any complaint, so far we have only one side of the story. I can’t for the life of me imagine a valid counter-argument that can be articulated in open court with a straight face, but if the case doesn’t settle then I’m sure we will hear some kind of argument, valid or otherwise. Of course, USA Trademark Enterprises and others operating in this space probably ought to fear a class action being brought against them. While one particular person or company losing $960 on these useless services is one thing, if everyone could be combined into a class action that would really capture the attention of the ne’er do wells operating in this space. The names of “customers” will likely be the in the first discover request by Schwimmer. Stay tuned!
Good luck and godspeed to Leason Ellis! Hopefully they will score a decisive victory over this skullduggery.
Join the Discussion
20 comments so far.
West Coast GuyFebruary 7, 2012 03:35 pm
If you click the “View image in PDF format” button at the bottom of the Secretary of State web link, you get the following for “purposes” of the corporation:
For GLOBAL BUSINESS OPTION, INC.:
“Physical therapy, massage, and health franchise activities”
Not really sure how trademarks work into this, but looks likes facts of misrepresentation to me.
Could you be added as a plaintiff (and IP Watchdog) because of what they sent to you?
West Coast GuyFebruary 7, 2012 03:07 pm
Here’s some more FACTS that could be useful from the Florida Secretary of State at:
Seems that they share the same office. Seems to be that they are really one organization representing themselves as two. Could be alleged as a factual misrepresentation?
USA TRADEMARK ENTERPRISES, INC.
Name & Address
677 NORTH WASHINGTON BLVD., SUITE# 57
SARASOTA FL 34236 US
677 NORTH WASHINGTON BLVD., SUITE# 57
SARASOTA FL 34236 US
GLOBAL BUSINESS OPTION, INC.
677 NORTH WASHINGTON BLVD., SUITE# 57
SARASOTA FL 34236 US
677 NORTH WASHINGTON BLVD., SUITE# 57
SARASOTA FL 34236 US
West Coast GuyFebruary 7, 2012 02:56 pm
Here’s an actual fact that could be useful (my initial thought is RICO) (can’t think of how this could be useful without more consideration):
The bank of “wire transfer” information on the Global Business Option, Inc.” solictation you and Renee received is the same bank (identical address) as the “wire transfer” information of “USA Trademark Enterprises, Inc.” that Mr. Pelton received that is an Exhibit in the Complaint.
Not only that, it is the identical sales pitch. The seem to represent themselves as two organizations when they are really one.
Is it too late to amend the Complaint?
West Coast GuyFebruary 7, 2012 12:02 pm
Is there any reason why this doesn’t proceed directly to a Motion for Summary Judgment? When the evidence involved in the suit consists of published and written materials, where is there a dispute of facts? The allegations of the Complaint are extremely heavy in opinion and extremely light of facts.
Here are three of the alleged “facts” which are nothing more than links to websites:
I like the above link because Mr. Pelton opines that solicitations are worthless and possibly fraudulent because, in part — and get this — “are not performed by an attorney.” So, it wouldn’t be fraudulent if performed by attorneys?
Wow, the one paragraph lay opinion has a lot of “expert” meat to chew on.
Wow, another lay person’s conclusion that “This is one very lucrative (and yet fraudulent) business.”
Summary judgment seems to be the way to go to dispose of this suit.
West Coast GuyFebruary 6, 2012 04:42 pm
“Please identify where I said that Westlaw is breaking the law by publishing the MPEP. Really, I am waiting.”
Although you haven’t stated it, it is the logical conclusion of your argument. In Post No. 3 above, your stated “Clearly (and I do mean clearly literally) there is no legal benefit to publication.” No, you are incorrect, and Westlaw proves my point. Westlaw has legally benefitted from publishing and selling the MPEP even though the information is available for free on the PTO’s website, and the buyer of the Westlaw MPEP has benefitted, too.
“Your argument is that this company that sends letters with the intent to create a misperception in the mind of the reader is not legally either fraud or misrepresentation. If you were familiar with the law you would know that your position is wrong.”
If misrepresentation is an element for fraud or deceit (or other similar tortuous conduct), then it is not present in the letter your and Renee received.
GBO states: “The above mentioned data represents a sample of your trademark registration.”
Here, no misrepresentation.
GBO states: “By paying the amount indicated you accept this offer and approve the listing of this information in the “The Global Trademark and Servicemark Selection of the USA” catalog and our online Global Trademark database at http://www.gbo-trademark.com.”
Here, no misrepresentation as long as your trademark is listed (i.e., published) in its catalog, and there is nothing wrong with lifting it from a public database and selling it for a profit (ask Westlaw). As long as it is listed on its database, no misrepresentation.
GBO states: “The law considers a trademark to be a form of property.”
True, no misrepresentation. Trademark is a form of property — intellectual property — and law students are taught this. In my casebook “Copyright, Patent, Trademark and Related State Documents” by Paul Goldstein on page 2 of the Revised Fourth Edition, the following is stated: “Two centuries later, the balance of power over intellectual property had shifted decisively to Congress and the federal courts. The federal Lanham Trademark Act is today the principal vehicle for registering marks used on goods and service and is the main source of substantive rights in marks[.]”
If you think this is a misrepresentation, then you’re going to need more than your proffered personal opinion of “So the statement that the law recognizes trademarks as a form of property is actually not true” of Post No. 3. Law students are taught otherwise.
GBO states: “Your above registration provides a notice to others that your described trademark/servicemark is already taken.”
True, no misrepresentation. There is no phantom word such as “a [legal] notice.”
GBO states: “Our publication contains a depiction of your registered mark, the identification of goods and/or services, year of the registration and owner information as well.”
If this information is available from the PTO and this information has been retrieved, then no misrepresentation.
GBO states: “We can also help you transfer your active trademark to the third party for your financial gain.”
True, and you’ve admitted it yourself. In Post No. 3, you said “Trademarks can only be assigned as part of a sale of an ongoing business.” Because an assignment is a form of transfer, there is no misrepresentation.
GBO states: “This transfer option would be a great opportunity to sell your unused or outdated trademarks. If you are interested in selling your current trademark, please check the category below[.]”
No misrepresentation if a United States trademark can be lawfully sold to a company in any country in the world. There are no phantom words here that state “If you are interested in selling your current trademark [to another company in the United States].” If the phantom words were present and if such transaction is unlawful as you opine, then it would be a misrepresentation and unlawful.
Let’s think like lawyers, Gene. Elements are important, and if “misrepresentation” is a necessary element, then this element has NOT been met. Hence, no unlawful or tortuous conduct.
Finally, I have no dog in this hunt. I have never heard of any of the parties until you published the article on your website. I am a solo practitioner who has the flexibility to waste a day or two discussing a topic of interest.
Gene QuinnFebruary 6, 2012 03:29 pm
West Coast Guy-
Please identify where I said that Westlaw is breaking the law by publishing the MPEP. Really, I am waiting.
You are a part of what makes debating on the Internet impossible. You take a ridiculous position and then try and put words in my mouth. You make absurd arguments in an attempt to justify the asinine.
Your argument is that this company that sends letters with the intent to create a misperception in the mind of the reader is not legally either fraud or misrepresentation. If you were familiar with the law you would know that your position is wrong.
Now that you are so invested in your absurd Westlaw argument, please provide proof that Westlaw operates like these companies. Please share a link to an unsolicited letter that Westlaw sends out that (1) looks official; (2) looks like a bill; (3) creates a misperception in the mind of the reader; and (4) gets trademark law wrong. That way we can compare apples to apples instead of apples to elephants like you seem to want to do.
Also, you haven’t responded to your admission. You admit that they are wrong on US trademark law but may be right on trademark law in other countries. That argument proves the point that this letter creates a misperception and is at least misrepresentation. Sending a letter to US trademark owners and convincing them to send money for no value based on what may be the law overseas is clearly misrepresentation.
Finally, I have asked you a number of times and you never respond. What is your agenda? If you want to continue to have this discussion you will need to identify you relationship to these companies (if any) and what your particular motivation is to defend the practice of imposing an unnecessary tax on the unsuspecting.
West Coast GuyFebruary 6, 2012 02:14 pm
If you follow the Westlaw link that I provided, you will see under the description that it is “[t]he book, published by the U.S. Department of Commerce[.]”
Available for free on the PTO database yet Westlaw is selling it and probably making a profit. Unlawful? Your arguments say yes, but I say no.
West Coast GuyFebruary 6, 2012 02:06 pm
There is nothing unlawful for someone to download, print, bind into one or more volumes, and sell them for a profit even though the same materials are available for free from the PTO website.
While I agree with you that Westlaw and other electronic databases provide a valuable benefit, I wrote only of the one product at the following link which is nothing more than the MPEP that has been printed from the pdf files accessible from the PTO database and bounded into two volumes:
From the arguments you’ve made, Westlaw has acted unlawfully by publishing the MPEP in two volumes. You’ve also asserted that there is no value for Westlaw to publish the two-volume MPEP in hardcopy form because it is available free and available to download/print from the PTO’s database.
Gene QuinnFebruary 6, 2012 01:21 pm
West Coast Guy-
Are you trying to set up arguments that I can slam out of the park?
You say: “then Westlaw is acting unlawfully because it is charging money for something that is free…”
Obviously you have never used Westlaw, or perhaps it is that you have never used PACER or any of the many disparate websites that provide case law, statutes, law reviews, etc. Westlaw and Lexis collect those documents and catalog them, providing them in easily searchable fashion. They offer a service that is not available for free anywhere. Compare that with the identical “service” that is being offered for $960, which is already identically provided by the USPTO.
Also, you say: “The first is that “trademarks cannot be sold in and of themselves like other forms of property[.]” While you may be correct about trademarks in the United States, the representation made by the publication company does not include a statement about jurisdiction.”
You prove my point. They are sending this notice to those applying for a US trademark and then make a statement that may be correct about trademarks other than US trademarks. That is the very definition of misrepresentation, which if you were an attorney you should know.
Your argument about saving people the cost of wear and tear on their printers and toner is ridiculous and presupposes that the owner of a registered trademark must publish, which they have no obligation to do.
So why don’t you tell us why you are so adamantly defending what everyone in the industry considers misrepresentation or even fraud?
Gene QuinnFebruary 6, 2012 10:35 am
I am going to be doing a story in the coming weeks on the patent equivalent. I don’t know that any of our clients have received the notice you mention, but will check. I see creative maintenance fee letters once in a while. If you have any examples please send them my way. So stay tuned!
I also brought this issue up in my interview (to be published) with the Commissioner for Trademarks. Hopefully we can expose these types of unnecessary and legally meaningless “services.”
Thanks for reading.
West Coast GuyFebruary 6, 2012 09:33 am
Your statements seem to advance two main points. The first is that “trademarks cannot be sold in and of themselves like other forms of property[.]” While you may be correct about trademarks in the United States, the representation made by the publication company does not include a statement about jurisdiction. So, if there is one other country that in which trademarks can be sold, there is no misrepresentation. According to the website of the defendant in the court case of which you write, there is a claim that trademarks are sellable in the world. If this is true, again, no misrepresentation. In my opinion, you are reading something about jurisdiction where there is no such statement about jurisdiction. There is no misrepresentation where the reader inserts phantom words.
The second point that you seem to be advancing (and it is a point raised by Ms. Speer) it that the hardcopy document is “obsolete as soon as the ink hits the page” and that there is no value because you can search the public database for free. While this may be true, that doesn’t mean their product doesn’t have value. Here’s an example that might hit close to home.
I use Westlaw’s MPEP, 8th edi., Rev. No. 5 which is up-to-date through August 2005. Every chapter in Westlaw’s publication is found on the PTO’s website:
I still use it and find it valuable because I like using books, for they are tactile and allow me to thumb through pages; I don’t have to click a mouse to scroll down or turn a page or waste paper and toner printing out the pages. If the particular section applies to an argument I want to make, then I go to that particular section at the PTO’s website to see if it has changed or what updates have been made. The fact that it is outdated does not mean it has no value; it has value despite being outdated and despite the PTO providing a free database of the same information.
If you’re arguing that because a publication company is acting unlawfully because it publishes and sells information that is available for free at the PTO’s website, then Westlaw is acting unlawfully because it is charging money for something that is free:
There is value by saving the consumer the cost associated with the wear-and-tear on the printer (especially hundreds of pages like the MPEP) and the cost of printing such as toner and the binding the printed material in book form.
Dan FeigelsonFebruary 6, 2012 02:29 am
Great timing Gene – I just posted something about a similar situation on my blog this morning (a European Community Mark owner who received a notice of renewal from a scam artist, http://www.iliplaw.com/2012/02/thats-not-kosher-a-tale-of-a-treif-trademark-renewal-request.html) and then I saw your post, so I added a link. I fully agree that these letters – and the names of the companies that appear on them – are design to lure the gullible into unnecessarily forking over cash. Have any of your patent clients received similar notices, offering to include their patent information in a private database for the low, low price of $1700?
Gene QuinnFebruary 3, 2012 01:43 pm
West Coast Guy-
I don’t care what lawyer or law firm disagrees with me. Trademarks are not property. You cannot sell a trademark unless it is attached to the good will of an ongoing business. If you do the trademark ceases to exist. That is black letter law and anyone who disagrees is wrong.
What exactly are they making user friendly? The USPTO publishes trademarks and makes them electronically searchable. Why you choose to defend this type of misrepresentation is a mystery. Are you involved with one of these companies? What they provide is legally without benefit.
Brenda SpeerFebruary 3, 2012 11:18 am
I have had several of my trademark clients contact me in the past week regarding notices they got from this outfit. Each of them thought it was an official, government communication that required action. I agree with your assessment that GBO is preying upon consumer confusion (no pun intended) to extract monies from them.
As for West Coast Guy’s comment that it would be an easier, less cumbersome search source, I fail to see how that could be the case. Per GBO’s website (gbo-trademark.com): “The Global Trademark and Servicemark Selection of the USA Catalogue is updated on a yearly basis and released annually. The next release of our publication is scheduled for September, 2012.” And to be listed you have to have “the registration fee paid by May 1st 2012 to qualify for listing in the 2012 catalogue.” So, you get a printed catalog that comes out once per year with information that is incomplete (excludes marks between May and September, at a minimum, and presuming only those paying would be listed) and obsolete as soon as the ink hits the page.
A tidbit from GBO’s website FAQ page – replete with legal misinformation:
“What is the difference between a trade name and a trademark?
A brand or trade name is the name which a business operates under, and is used to identify a business entities products or services, but, that trade name may not be registered as a trademark.”
At best, these companies are annoying.
West Coast GuyFebruary 3, 2012 11:01 am
If your position is that these companies provide no value in the actual registration process, I agree.
But from the letter that you and Renee received from GPO (that you’ve linked as “Complaint”), they offer a publication service and help in transferring and/or selling your trademark.
I don’t see where they offer help in the registration process. In fact, they have provided a sample of “your trademark registration.” That is, they acknowledge that your mark has been registered.
West Coast GuyFebruary 3, 2012 10:49 am
“Trademarks cannot be sold in and of themselves like other forms of property[.]”
The lawfirm of Cobalt Law disagrees with its statement that says “[a] new website has launched whose purpose is to connect potential buyers and sellers of trademarks.”
“So it is your believe that these trademark publication services provide value?”
Yes. Making something user friendly provides value. If a private database is easier to access than the government’s cumbersome public database (and I assume the access to the trademark side is as cumbersome as access to the patent side of the PTO’s database), there is a value in user-friendliness.
Gene QuinnFebruary 3, 2012 10:23 am
West Coast Guy-
There is no First Amendment right to mislead. I am confident that a court will find this valueless publication to be misleading. After all, it is about what those who receive the notice believe.
Gene QuinnFebruary 3, 2012 10:12 am
West Coast Guy-
The implication is that you need to notify the public in order to protect your trademark, which is 100% untrue.
Actually, trademarks are not property really. They are a source identifier. I didn’t want to get into this in this article because I thought it would obscure the point.
Trademarks cannot be sold in and of themselves like other forms of property can be, such as patents or copyrights or real property. Trademarks can only be assigned as part of a sale of an ongoing business because trademarks are tied to a particular good or service vis-a-vis the provider or source. So the statement that the law recognizes trademarks as a form of property is actually not true. The law is very clear on this point. That is why trademark owners have a claim for the creation of consumer confusion.
You say: “There is value in the fact that there is a private source and/or an additional source of information besides the government being the sole source.”
So it is your believe that these trademark publication services provide value? I’m sorry, but that is really difficult to accept without wondering what your agenda might be. Clearly (and I do mean clearly literally) there is no legal benefit to publication.
West Coast GuyFebruary 3, 2012 10:01 am
Schwimmer is attempting to characterize the offer as a “public notice.” Nowhere in the letter does it claim to be part of the trademark process. The letter you and others receive want to provide information your trademark information in a catalog. It is junk mail that courts have said can be easily throw away.
It also clearly states that “[y]our trademark details are found using public information.” They clearly provide an additional publication in which trademark information can be accessed.
Seems to me there is a First Amendment defense of Freedom of Speech which the court, in my opinion and from the limited facts that you’ve presented, should not inhibit with injunction relief.
Just additional considerations from another point of view….
West Coast GuyFebruary 3, 2012 09:34 am
Where’s the misrepresentation?
“The law considers a trademark to be a form of property.” Yes, not a misrepresentation.
“Your above registration provides a notice to others that your described trademark/servicemark is already taken.” Yes, not a misrepresentation.
“Our publication contains a depiction of your registered mark, the identification of goods and/or services, year of the registration and owner information as well.” Yes, not a misrepresentation.
None of the above statements are misleading — they are truthful and correct.
Also, “is an offer, not an invoice” makes no representation that the use of their services is optional.
As far as value, I hate searching the PTO database for patents because it is cumbersome, does not provide easy access and not user friendly. I like searching for patents using http://www.freepatentsonline.com to conduct my searches because it is easy and user-friendly. It looks like they provide access to the same information, so there is a definite value over the government’s publications.
As a commercially-rated pilot, I like using private publishers (e.g., Jeppesen) rather than the government as a publisher. There is value in the fact that there is a private source and/or an additional source of information besides the government being the sole source.
Just another point of view….