From: JOE STRAHL [mailto:email@example.com]
Sent: Friday, July 13, 2007 7:15 PM
To: Andrew Oh-Willeke
Subject: BLOG POSTING 7 JULY 07 ON BLOGGER
Blog Name Wash Park Prophet
Registration Number: 2342923
This posting is in violation of the TOS and CONTENT policy.
Mr. Trademark® Inc. is a registered trademark in the USA and several countries.
Registration Number: 2342923
Mr. Trademark® registered trademark is being associated with a Mr. Leo Stoller who has been involved in what might be considered illegal or criminal proceedings. Mr Stoller is not associated with, retained by, or known by Mr. Trademark ® Inc. The posting gives clear association with Mr. Stoller by the use of Mr. Trademark® registered trademark in your post. Mr. Trademark's ® 10 year reputation as a trademark search company and agent is being harmed by the defamatory and libelous post. Mr. Trademark® Inc. has hundreds of law firm customers that could wrongfully associate Mr. Trademark ® Inc. with Mr. Stoller.
Googles policy is very clear. "Defamation/Libel. Users should not publish any content that is unlawful, defamatory, and fraudulent."
We want the post and any other posts removed immediately and the name of Mr. Trademark® in the title removed or legal action will be taken.
Joe Strahl VP
Mr. Trademark® Inc.
09 July 2007
Mr. Trademark Abuse
Leo Stoller is the poster child for trademark abuse. Most recently, he received a rebuke in the 7th Circuit Court of Appeals, in a decision so lacking in traditional judicial opinion style that it is tolerable only because Stoller's conduct is so egregious and needs to be stopped.
The bigger problem, of course, is how he managed to get so many frivilous trademark applications past the patent and trademark office. These need to be cancelled not piecemeal, but en masse, and accompanying by criminal prosecutions for filing false trademark applications.
Posted by Andrew Oh-Willeke at 7/09/2007 04:05:00
Defamation/Libel. Users should not publish any content that is unlawful, defamatory, and fraudulent. Note that an allegation of defamatory expression, in and of itself, does not establish defamation. The truth or falsehood of a bit of expression is a key element in establishing defamation, and we are not in a position to make that sort of fact-based judgment. That said, if we have reason to believe that a particular statement is defamatory (a court order, for example), we will remove that statement.
Copyright. Using copyrighted material does not constitute infringement in all cases. In general, however, users should be careful when using copyrighted content without the permission of those who created it.
It is our policy to respond to notices of alleged infringement that comply with the Digital Millennium Copyright Act ("DMCA"). If we remove a blog/post or disable access to a blog to comply with the DMCA, we will make a good-faith attempt to contact the owner or administrator of each affected site so that they may make a counter notification pursuant to section 512(g)(2) and (3) of the DMCA. It is our policy to document all notices of alleged infringement on which we act. A copy of the notice, with any personally identifying information removed, will be sent to a third party who will make it available to the public.
I have added a disclaimer to that post in an abundance of caution as a response.
I have received your e-mail and have posted a disclaimer in the post in an abundance of caution. Never the less, I believe that you cease and desist e-mail is off base. I will not remove the post or change the title as you have requested.
1. I am not trying to sell trademark services in this post.
2. I have made no false statements of fact.
3. I clearly identify the factual basis of my statements.
4. You, like Mr. Stoller, seem to fail to appreciate that a registered trademark is not a monopoly on use of certain words, it is merely a ban on marketing goods or services in a confusing fashion.
5. From context, it is clear that “Mr. Trademark Abuse”, the title of my post, is something very different, indeed the opposite of, “Mr. Trademark.”, which you have registered.
6. Also, from context, it is clear that I am not using the words in a manner intended to have secondary meaning.
7. I seriously doubt that your registered trademark would withstand court scrutiny as it is merely descriptive of the services you provide. Descriptive trademarks are inherently weak. In the same way, it is impossible to get a valid trademark on “Liquor Store” or “Dry Cleaner” for a liquor store or dry cleaner respectively. Your own trademark verge on frivolous itself.
Please refrain from taking further unreasonable action.
* The registered mark is not simply of the words "Mr. Trademark" but of a "(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS" which consists of a drawing of a cute little man next to the words "Mr. Trademark" and includes the disclaimer: "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "TRADEMARK" APART FROM THE MARK AS SHOWN". Of course, my post had no drawing of a cute little man in it (the cute little man, by the way, looks nothing like Leo Stoller).
* The name of the registrant differs from the name of the company trying to enforce the mark. The enforcing party is not: "(REGISTRANT) VARNER, ELLEN INDIVIDUAL UNITED STATES 263 OLD MAIN STREET CLIFFSIDE NORTH CAROLINA 28024", although, of course, this could have been licensed, but I'm not sure that the person sending me the e-mail is the true owner of the mark.
His response to my response (emphasis and spaces between paragraphs added editorially):
I understand your position.
Your post title "Mr. Trademark abuse" and mentioning Mr Stoller in the next sentence would not lead the average consumer to relate the two.
I am in a narrow field with a narrow channel of trade and my clients which may or may not read your ramblings COULD confuse the two. I have many law firms and in-house counsels as clients that might assume that they are related which would damage me it it remains,
I contend that your post is confusing to anyone that is in the IP business.
Thank you for adding a disclaimer but I see no reason for you to allow it to stay up.
I have reported it to Google and it may be boarder-line in your legal opinion but in my lawyers opinion it it not.
I want it removed.
Your opinions in regard to the descriptive nature of my registered trademark are not relevant. It is in fact a registered trademark on the principal register so the USPTO seems to disagree with your assessment.
I protect it and that is the process and the law.
I am asking you in a nice manner. No threats just asking to remove it or I will have not choice but to defend it. I have to.
1. How do I know you have a right to enforce the mark? You are not the registered owner of the mark. You are also not an attorney authorized to act on behalf of third parties in legal matters.
2. The mark you referenced is not to “Mr. Trademark”. The mark is a logo containing a picture of a little man next to “Mr. Trademark.”, and disclaims all rights to the word “trademark.
and he writes back:
No it is in my wife's name.
No I am not a lawyer. I have never held myself out to be one.
I just search a great deal of names for companies and law firms.
We do many things in that area including in over 80 other countries.
I don't want to discuss the merits of your post. I just do not want any of my clients present or future to somehow think or link that Mr. Stoller is associated with our company. That is all plain and simple. He is a hot topic on INTA and other places. I can't afford the connection.
Your title Mr. Trademark give the impression or association that Mr. Stoller is Mr Trademark. Why would you use that title? Is Mr Stoller aka Mr. Trademark? No. Would people in this small IP world connect the two with your post? Yes, we did and so did others. I don't want to draw attention to it I just want it gone. What is so hard to understand about that? I don't want to waste time and money on going to war over this.
I would hope that you do not have enough time to get into this. I know I don't as we are very busy and in the process of branding the name and expanding into more countries and registering in more countries.
I can't afford the connection to that dirt bag. Please take it down or change or drop the MR part of it. Please?
In short, it looks like it will get ugly.
On April 18, 2007, the authorized practice committee of the North Carolina bar issued the following letter of caution:
06AP0107 – Ellen Varner and Joe Strahl dba Mr. Trademark: Business offers web based trademark searches, opinions, and application preparation.
The North Carolina corporation Mr. Trademark, Inc. with Ellen Varner as registered agent was dissolved in 2004. The casts doubt on the website claim that:
All material herein Copyright © 2007 Mr. Trademark Inc.,
All Rights Reserved
MrTrademark.com and Mr. Trademark are service marks of Mr. Trademark Inc.
Despite this the firm appears to advertise as a law firm.
Mr. Strahl is also apparently affiliated with "www.dontneedalawyer.com", a company incorporation service which appears to be defunct at this time.
A February 13, 2006 profile here states that (absence of circle (r) after "Mr. Trademark" name in the original):
Joe Strahl, the founder of this business, was formerly the owner of Prison Life magazine. When copyright issues related to the magazine arose, Strahl found that rather than pay a lawyer, he could research existing trademarks for free through a database that was available at the New York Public Library. After completing this work, Strahl realized that the basic research to determine the existence of any trademark conflicts does not require a lawyer. He concluded that he could build a profitable business around this research service. The benefits Mr. Trademark offers include far lower costs than those of lawyer-guided trademark investigation services and guaranteed 24-hour turnaround.
The Prison Life Website appears to be defunct, but a surviving reference calls it "a U.S. magazine by and for cons and ex-cons, archived back to October 1996. The hard copy edition also includes a Canadian Page." According to an article published when the magazine came out "publisher Joe Strahl, who came up with the idea for the magazine one day at 2 a.m., has five years of experience working in an Illinois prison commissary."
Also, the claim to use the "Mr. Trademark" name from 1997 appears to be a bit late. A trademark lawyer named Edward Vandenburgh was known as Mr. Trademark decades earlier.
Mr. Strahl is listed in the top 50 of trademark attorneys based upon the number of trademark applications he is named in, but it isn't clear whether or not he is really an attorney. This source notes PTO litigation reference claiming that he was not.
I'll keep you updated if there are further developments.