Fraudulent Trademarks on a Large Scale

[Dustin Alameda]

Jurisdiction

Florida

I have a small business that makes historic sports merchandise. In this market it is common for competitors to use the marks of defunct teams ornamentally. Consumers are aware the teams no longer exist and do not associate the marks with a specific brand. The source of goods is indicated like any other clothing company with the use of tags or a discrete mark.

The biggest competitor in this industry registered over 100 marks of the most well known defunct teams to prevent competition. Essentially they own the market because of this. The marks were once owned by other companies, so this competitor should not have any rights to it. Many of the marks were registered with fraudulent specimens and are only used ornamentally if used at all.

My question is what can be done about this? The USPTO told me I have to dispute them one by one. I tried disputing a mark, but after 6 months we have not even reached the discovery conference because they keep delaying it. It seems impossible to dispute over 100 marks. They are aware these marks are not enforceable, but threatened to take me to court until I run out of money if I attempt to use any of them. They are a huge corporation so I can't take that risk, but there must be some other options available. Thank you.

 

[adjusterjack]

They are a huge corporation so I can't take that risk,

Then don't.

there must be some other options available.

Sorry, but the reality is that, if you don't have a lot of money, you don't have any other options.

 

[zddoodah]

I have a small business that makes historic sports merchandise.

Ummm...if you're making it, then it isn't historic. I assume you're talking about replicas, but I'm not quite sure.

Consumers are aware the teams no longer exist and do not associate the marks with a specific brand.

I assume you have no actual evidence of this (with the possible exception of some anecdotal information).

The marks were once owned by other companies, so this competitor should not have any rights to it.

You're entitled to that opinion, but the law says otherwise.

My question is what can be done about this? The USPTO told me I have to dispute them one by one.

Not sure why you asked the question when you already know the answer.

there must be some other options available.

That's not true, but there might be some options. Thinking of options in situations like this is how lawyers make money. Hire one and see what he/she can come up with.

P.S. There's nothing fraudulent about any of this. The company to who you've referred took advantage of the law, just as anyone else could have done.

 

[Dustin Alameda]

Then don't.



Sorry, but the reality is that, if you don't have a lot of money, you don't have any other options.

I'm out of options at this point. When they see I have something selling well they register it and then threaten me. I can't register the marks because it will be refused forI'm basically at the point of stop making merchandise and go out of business or fight them and go out of business from taking on lawsuits.

Ummm...if you're making it, then it isn't historic. I assume you're talking about replicas, but I'm not quite sure.



I assume you have no actual evidence of this (with the possible exception of some anecdotal information).



You're entitled to that opinion, but the law says otherwise.



Not sure why you asked the question when you already know the answer.



That's not true, but there might be some options. Thinking of options in situations like this is how lawyers make money. Hire one and see what he/she can come up with.

P.S. There's nothing fraudulent about any of this. The company to who you've referred took advantage of the law, just as anyone else could have done.

Yes, so when I've found other old teams to make throwback merchandise for, they will threaten me and tell me to stop selling it. With my most popular team, they tried to register it for themselves.

My issue isn't whether the the marks are legitimate. The specimens used to get the trademarks are fraudulent, which I can prove. Based on my conversations with the company's attorney they are aware the marks are not enforceable as well. Their only defense is they know they can bankrupt me pretty easily with court cases.

I've spoken to trademark attorneys who only offer to dispute them one by one. Each could take years, so it doesn't seem like an option. I've spoken to an antitrust attorney who said registering a trademark isn't stopping me from using it if it's truly not enforceable. So that's fine, but then I will still have to deal with the lawsuits if I use any of them. I don't know what else I can do. It's getting to the point where I either stop making merchandise and go out of business, or do it anyways and go bankrupt with court cases.

 

[zddoodah]

My issue isn't whether the the marks are legitimate. The specimens used to get the trademarks are fraudulent, which I can prove.

Not sure what this means.

Not really sure what you expect anyone here to tell you beyond what's already been said.

 

[Dustin Alameda]

Not sure what this means.

Not really sure what you expect anyone here to tell you beyond what's already been said.

Just seeing if there are other available options or resources available that anyone knows of.

 

[Michael Wechsler]

Unfortunately there is no simple, expeditious, cost effective manner to obtain a decree on your specific legal issue and understanding of the law which will provide you with absolute clarity.

You have a choice and it's similar with regard to patents and the allegations that overworked USPTO employees are erroneous awarding patents or that some are not actually enforceable for a set of activities. Obviously you should obtain proper legal advice and obtain an expert legal opinion, perhaps even a second legal opinion, to be confident of the position you are taking and for proper risk assessment. If you continue to produce merchandise with these sports teams / franchises logos you may receive a cease and desist letter. Should one arrive, you can have your attorney respond and see whether your competitor will file a lawsuit or walk away when a scare tactic didn't work.

Many years ago I registered a domain name and put up a blog relating to the name without giving it a second thought. Unknown to me, a company used a very similar name (shorthand for my domain) and then sent me a cease and desist letter. After performing research, I was quite confident in my position. I replied to the company's law firm to inform the that I wasn't simply handing over the domain name to them and thanking them for their mercy in exchange for a guilty plea. I never heard from them again. It's a tough place to be but these are your choices. Good luck.