Display Works v Pinnacle Exhibits, D Maryland 2015: Motion to dismiss false advertising cause denied. Plaintiff had properly pled that informal statements made to by defendan t to customers were suffuciently disseminated so as to constitute promotional statements potentially actionable under 43(a)(1)(B).
I received the email reproduced below soliciting the use of LegalForce Trademarkia’s law services to obtain a design patent, probably because I am the corresponding attorney for a US registration covering the trademark referred to in the email’s subject heading.
There is some murk in the email as to who is soliciting who’s services. The email is signed by a customer service representative of LegalForce Trademark, Inc. LegalForce Trademarkia is identified in the text as a search engine. However, the email doesn’t promote search engine services, but rather solicits the use of a legal services.
The first sentence states: “Please speak attorney with whom you have a prior relationship . . ” (sic)
If you don’t speak ‘prior attorney,’ you can click a link that leads you to “Chat-torney.” Other links in the email lead to the LegalForce site, which contains pages that solicits the use of “LegalForce Attorneys/agents” and the “LegalForce RAPC” law firm. [update: the landing pages of these links are reproduced below]
The email states that I should apply now for a design patent.
However, the date of first use claimed in the registration of the trademark referred to in the email is 2009. The deadline for filing for a design patent is one year after public disclosure (a point acknowledged in one of the back pages of the LegalForce site). So, presumably, the product in question likely hasn’t been eligible for design patent for approximately 5 years (if it ever did have a design eligible for patent protection). It is within the realm of possibility that a trademark owner may use an existing mark on an entirely new product, and thus could still be eligible for design patent protection, but nevertheless, the one year deadline is not disclosed here prior to contact with the soliciting firm.
I wonder how many of these emails have been sent out to trademark registrants.
UPDATE 1: This original post appeared Wednesday morning, November 25. That evening, LegalForce sent me a tweet stating that “Your blog post is inaccurate. Our workflow clearly outlines this point. It linked to its ‘design patent application’ page and provided the following screenshot.
As the illustration refers to three checklist questions, presumably from a form a potential LF customer fills out, refer to the one year filing window, I assume that by ‘this point’, LF is referring to the one year window. I responded to LegalForce noting that I had reproduced the email in its entirety, so readers can evaluate the email on their own. While the omission of the one year window is only one issue raised by the legal solicitation, I note that (1) the email that leads to LF’s website, doesn’t mention the window and (2) the ‘design patent application’ doesn’t mention the one year window either (as an aside, the term of a design patent given is incorrect).
Additionally, if the ‘workflow’ screenshot illustrates the only three questions the customer answers with regard to the 1 year window, then the customer is not being asked whether the product design had been publicly displayed more than one year prior to filing (public display being different from ‘offer for sale.’)
Interestingly, the ‘design patent application’ page (Link 2 below) does contain a link to a PDF entitled “Design Patents” (the link labeled ‘Read Details PDF’), which does correctly note that ‘public disclosure’ starts the one year window.
In any event, I stand by the last sentence in my original post “. . . the one year deadline is not disclosed here prior to contact with the soliciting firm” and based on LF’s citation of its ‘workflow’ snaphot, the disclosure is apparent only after the customer has begun filling out what is described as the ‘Design Patent Application.’
UPDATE 2: On Friday evening, LF Trademarkia tweeted me to ask me to include the links to ‘give fair representation’ of its message. I have now reproduced below the landing pages from the four links in the email. The first link goes to the ‘chattorney’ page and the next three links (indicated by boldface), go to the ‘design patent application’ page. I have reproduced the urls of the landing pages in the text of the email above, as well.
ORIGINAL LF TRADEMARKIA EMAIL SENT TO ME:
Subject: Design Patent for [Trademark name] product shape?
Please speak attorney with whom you have a prior relationship if you have IP or corporate law questions. If none, schedule a free 15 minute consultation with a LegalForce law firm attorney or legal assistant by clicking here [link to http://www.trademarkia.com/bookflip/meet-attorney.aspx?sc=yelp&utm_source=admin&utm_medium=email&utm_content=FreeChattorney&utm_campaign=email]
Dear [name of registrant],
Did you know that your United States trademark solely protects your branding but not your physical product itself? The benefit to you is that if your product design is unique, it is very important to protect the physical shape of your products as a design patent [link to https://www.trademarkia.com/patent/Design-Patent.aspx] to prevent counterfeit goods or knockoffs.
LegalForce Trademarkia, the world’s largest trademark search engine, can help you protect your product design as a design patent for $899 [same link as above] plus the government fees ($380). All you need to do is upload photographs of your product design, and a registered U.S. patent attorney will prepare formal drawings for submission to the United States Patent Office. We will review your submission to ensure compliance with the requirements of the United States Patent & Trademark office.
So, what are you waiting for, apply now for a design patent! [same link a above]
I look forward to being of service to you.
[name of rep]
Customer Service Representative
LegalForce Trademarkia, Inc.
1580 W. El Camino Real Suite 10
Mountain View, CA 94040
Texas A&M sues the Indianapolis Colts re use of the mark 12th MAN.
Lead plaintiff in class action purchased the 92 fluid ounce and 138 fluid ounce bottles of TIDE PLUS BLEACH. The opaque bottles were ‘over-sized’ and did not accurately reflect the volume of detergent. Proctor &^ Gamble ‘routinely employed deceptive packaging containing excessive empty space to mislead consumers into believing they were receiving more laundry detergent than they actually were’ Also, by increasing the size of the bottles, defendants ‘maximized the shelf presence of their products.’ There does not appear to be an allegation that the bottles did not contained the identified number of fluid ounces.
I have been browsing the various ‘factcheck’ sites that analyze what politicians say. The two largest seem to be Politifact.com, which is a project of the Tampa Bay Times, and FactCheck.org, which is a project of the Annenberg Public Policy Center.
FactCheck took an interesting approach with a comment made by Jeb Bush, who stated that President Obama “believes that America’s leadership and presence in the world is not a force for good.” Googling the term reveals that this is a widely used Republican trope, as I found many Republican officials using the exact term ‘not a force for good’ and many embellishing upon it.
IMHO, this claim about Obama’s belief system is not so much a fact to be checked but a possibly fallacious argument to be evaluated. FactCheck treated it as a factual claim to be fact-checked.
I think there are two related types of fallacy at work here. The first is ‘attacking the motive.’ Rather than focusing on the adversary’s arguments (or actions), the arguer attributes an improper motive to the adversary. In order to attack the motive, one sometimes has to employ the mind-reading fallacy, in which the basis for discerning the adversary’s motive was, apparently, mind-reading (see Brendhan Nyhan’s work for more on mind-reading as a rhetorical practice).
If you see the entire Bush campaign video (embedded in the article), Bush goes on to identify specific actions (i.e. protecting Christians in the Middle East and dissidents in Iran) that Obama did not take, impliedly because Obama does not believe that America is a force for good.
Similarly, when Republican Wisconsin Senator Ron Johnson said that President Obama “doesn’t think America is a force for good in the world” the Senator provided the basis for his opinion. Obama shows ‘reluctance’ and revulsion’ to ‘utilizing America’s military strength.
By providing the basis for the speaker’s assertion, the reader can evaluate the logic of the statement. The Senator implies that if Obama showed ‘reluctance’ and ‘revulsion’ to use military force, then Obama doesn’t believe that America is a force for good in the world. Of course the result of the ‘attacking the motive’ fallacy is to shift the discussion to a critique of Obama’s belief, away from an evaluation of how best to protect ‘Christians in the Middle East’ or ‘dissidents in Iran’ and the appropriate use of America’s military strength.
Rather than pursing this analyis, FactCheck instead critiques the statement of Obama’s mind-set as a ‘fact’ to be checked. It identified nineteen times that Obama made public statements where he declares that America is ‘an indispensable force for good’ or ‘the greatest force for good in the world’ or the like.
FactCheck’s conclusion borders on the sarcastic:
Bush is free, of course, to make the case that Obama’s deeds have not matched his words. We don’t know what Obama “believes” (and neither does Bush), but we know what he says. And he has repeatedly said that America’s leadership and presence in the world is a “force for good.”
FactCheck’s Headline is: Clinton Misuses Stat on CEO Pay.
Clinton made two statements: ““There’s something wrong when CEOs make 300 times more than the American worker” and “The average CEO makes about 300 times what the average worker makes.” The Washington Post, when critiquing the statement, noted that Clinton was speaking extemporaneously, but also referring to notes.
It appears that Secretary Clinton was referring to a study of the top 350 corporations by revenue, when it fact there are over 246,000 CEOs in America.
FactCheck notes that as there are 246,240 Chief Executives in America, the top 350 CEOs certainly can’t be characterized as ‘average CEOs.’ If wages of the 246k CEOs were compared to the average worker’s wage, the ration would be approximately 4 to 1 (however FactCheck acknowledged that as a CEO receives compensation apart from wages, that it is not an accurate comparison). In any event, the ratio for the ‘average CEO’ to ‘average worker’ would be appear to be quite lower than ‘300 times.’
The post concludes that Clinton ‘could easily’ add ‘Top CEO’ as a qualifier, but she hasn’t. ‘ As an aside, when Fortune Magazine reported on the study, its headline was “Top CEOs make more than 300 times the average worker.”
In response to the assertion that Carson has no political experience, he responded on Facebook:
‘”You are absolutely right — I have no political experience,” Carson wrote in the initial version of his post. “The current Members of Congress have a combined 8,700 years of political experience. Are we sure political experience is what we need. Every signer of the Declaration of Independence had no elected office experience. . . .’
This claim is literally false. Many of the signers of the Declaration of Independence had been elected to their respective colonial legislatures. And it seems that most if not all the members of the Continental Congress were elected.
Carson then amended that post to read: “every signer of the Declaration of Independence had no elected federal office experience”.
Politifact rates this claim as ‘illogical’ and ‘nonsensical’ as a federal government did not exist on the day the Declaration of Independence was signed.
One might characterize as true but misleading for that reason, given that the signers of the Declaration of Independence were in fact the most experienced elected leaders at the national level.
J. Thomas McCarthy and Dina Roumiantseva, “Divert All Trademark Appeals to the Federal Circuit? We Think Not, 105 TMR 1276 (2015).
My favorite paragraphs:
“Has the Federal Circuit met the goal of speaking with a single voice on challenging and difficult issues of patent law? Critics argue that it has not, because disagreements among the court’s judges have replaced disagreement among the circuits on difficult issues.”
“We think the present system of Lanham Act appeals to regional circuits is preferable because it is a federal form of the proverbial ‘laboratory of the states’ metaphor envisioned by Justice Brandeis.”
“Our analysis shows that during the five-year period 2010-2015, the 9th Circuit led the nation, with 48 cases addressing Lanham Act issues, while the Fed. Cir. decided only 28 cases … [d]uring the same time frame ….the Second and Eleventh Circuits each decided 25 cases and the Sixth Circuit had 24 cases.”