Corporate giants take extraordinary measures to protect their intellectual property rights. They often resort to unethical and/or illegal tactics against small unsuspecting businesses in an attempt to force them to cease using their trademarks or risk threatened litigation. For the majority of small businesses faced with this situation, a courtroom battle is not a viable option because defending lawsuits can be extremely costly. Other bullying tactics frequently employed by corporate giants include efforts to extract license payments or attempts to force co-existence agreements. For the past year, Crystal Jordan, owner of WETakeOnCancer™ has been battling these very tactics against her own Goliath, the University of Michigan Board of Regents (“UM”). Well, little did UM know, Ms. Jordan was not going down without a fight.
FACTS OF THE CASE: THE BATTLEFIELD
On November 30, 2016, UM instituted a suit before the U.S. Patent and Trademark Office (“USPTO”) Trial & Appeal Board (“TTAB”) seeking to prevent Ms. Jordan’s trademark from registering. UM’s basis for bringing suit was that the marks were confusingly similar (trademark standard for infringement), and that UM was first to use the mark (UM priority date: March 2015 and Ms. Jordan’s priority date: January 2015). At the same time, UM was trying to overcome other refusals issued by the USPTO. The USPTO refused their application on various grounds, but for the sake of time, the primary issue was that UM was not using their mark as a “trademark.” In order to overcome this refusal, UM had to submit new documentation and certify (statement made under oath) that the new documents exhibiting proper trademark use were in use prior to their November 15, 2016 application submission. Well, it would appear that UM had no evidence to support their claims of use, because UM, by and through their counsel, submitted several website images and certified (under oath) that the submitted images were in use prior to their application submission. However, it is our firm belief that the submitted pages did not exist until sometime after February 6, 2017. In Ms. Jordan’s answer to their complaint, we submitted approximately 58 pages of archived web images dating back to March 2015 to bolster our claim that the use alleged and certified by UM did not occur until after the USPTO refused UM’s application and after the suit against Ms. Jordan was initiated – THEY LIED UNDER OATH. UM contends that their application has nothing to do with the suit against Ms. Jordan. Nothing can be further from the truth, because if UM was unable show the proper use to obtain approval, THEN SUCH A REFUSAL WOULD BE SUFFICIENT TO SHOW THAT UM HAD NO USE TO SUPPORT A CLAIM AGAINST Ms. Jordan. Accordingly, they fabricated this evidence to avoid an admission that UM had no proof and force Ms. Jordan to continue exhausting financial resources and litigating the matter before the TTAB.
THE LONE WOLF: DAVID HAS NO ALLIES
The Detroit Free Press expressed a keen interest in Ms. Jordan’s story. When the Detroit Free Press reached out to UM for a comment, UM told the reporter that, “ We told Ms. Jordan that she could continue to use her trademark.” I told the Detroit Free Press that such an offer was indicative of a large corporation’s hurbris, the nerve! UM cannot give Ms. Jordan the rights to use her own stuff. I explained to the reporter that such an offer was akin to me taking a portion of Lenny Kravitz’s song, then telling Lenny that he can use the rest. Trademark rights do not work that way. The first to use the mark in commerce has priority, and since Ms. Jordan was first, UM should be seeking permission from her, not the other way around. I went on further to explain that UM’s offer was hardly gratuitous because 1. UM must first have rights to give and 2. UM is the party in the position to dominate the market; and therefore, the offer was not mutually beneficial. So, for Ms. Jordan to accept such an offer would undermine her rights as a trademark owner. The reporter just didn’t get it – his reply was, “Well, I thought they were trying to take it from her.” I rebutted with, UM is very much trying to “take it from her.” Their position has essentially been either you let us use it or we’re going to force her to fight it out in court.
Needless to say, the Detroit Free Press decided not to run the story. Up until that point, the Michigan paper thought they had a hot story, then all of a sudden, no interest. The facts didn’t change. What happened during the time that they had the hot story and the time that UM returned their call for a comment? Unfortunately, this is just an uphill battle that is all too common for the small business – no money, no voice, and no allies. It would appear that no one cares about the David’s, Money talks!
The lack of a platform proved to be discouraging, but Ms. Jordan hasn’t given up her fight. Currently, UM and Ms. Jordan are preparing for their discovery demands, exchange of evidence to support their cases. This journey continues to be a hard-fought battle, but Ms. Jordan is committed to seeing it to the end.
It’s sad to say, but situations like this are typical for small businesses. We cannot allow the corporate giants to continue getting away with undermining and stealing the intellectual property rights of small businesses. Small businesses work very hard to create and develop their intellectual property with significantly less resources than their larger counterparts. So, for the corporate giants to swoop in and capitalize off of the blood, sweat, and tears of these thriving businesses, it’s just reprehensible. For many years, the Goliaths have been successful with their bullying tactics, because they know that the Davids of the world cannot afford to battle it out in court.
It’s worth the fight! If it wasn’t, UM wouldn’t have stooped so low. Protect your brand!
TO BE CONTINUED…
Share this story with your family and friends who are small business owners and entrepreneurs. Encourage them to protect their brand. Don’t let the Goliaths take advantage or bully them into submission.
If you believe that you are being bullied, contact Cooper Legal to assist you in your battle.