We’ve all heard of patent trolls. Wikipedia defines them as a party (often a shell company) who purchases patents from usually bankrupt companies for the express purpose of suing other parties claiming damages for infringement, knowing that it is more likely those parties will pay to settle out than proceed to a costly trial. The Eastern District of Texas had been the patent troll capital of the world. But watch out, here come the trademark trolls. You heard me.
In this case, all the pertinent documents we will discuss below are already in the public record. So we can copy paste them here to discuss them further.
When filing a trademark application in the United States, the filing party (usually, an attorney, but sometimes, a non-attorney or mark owner), has to make a legal Declaration. The Declaration in the application for “Dunder Mifflin” by Gooder Labs (located in Johnson City, Tennessee), and signed by “President / CEO” Ken Talbert, says:
“The signatory believes that: if the applicant is filing the application under 15 U.S.C. § 1051(a), the applicant is the owner of the trademark/service mark sought to be registered; the applicant is using the mark in commerce on or in connection with the goods/services in the application; the specimen(s) shows the mark as used on or in connection with the goods/services in the application; and/or if the applicant filed an application under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e), the applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the goods/services in the application. The signatory believes that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive. The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.”
As you see, “willful false statements” or declaring that “all statements… are true” where in fact, they are not, carries stiff penalties, such as fine or imprisonment, or both. But what is this mark? And who is the owner, really?
Trademarks essentially tell consumers where and from whom goods or services come. Knowing who sells certain products or services builds goodwill over time with consumers in the general public. Entertainment companies, like NBCUniversal, will trademark the names of characters, communities, and other elements of famous shows for one purpose: merchandising. Merchandising is a golden goose of entertainment – there are at a minimum, nine distinct merchandising classes for goods and services listed under what is called the Nice Classification (named after the town in France – there is no Naughty Classification). One of the most well-used merchandising classes therefore, is clothing (cl. 025).
I digress, our trademark applicant, Gooder Labs, applied for a trademark that it declared it owned, “Dunder Mifflin”, on June 18, 2016, in cl. 025. Ken signed the declaration, attesting that Gooder Labs owned the mark. In fact, “Dunder Mifflin” is the name of a fictional paper company in a famous televi