A Fool for a Client

There are plenty of applications filed by people who just don’t understand trademark law. It’s really a shame when that happens.

But some people should know better.

In 2008, Paul R. Martin filed an application to register his trademark covering various legal services, including “trademark searching and clearance services.” Surely, here’s a guy who knows what he’s doing.

The trademark he sought to register: THE STARBUCKS LAWYER

That’s right. Mr. Martin applied to register a trademark that would infringe on one of the most famous and strongest brands in the world.

To people who understand trademark law, it’s no surprise that the examiner refused to register Mr. Martin’s “mark.”

Of the 239 applications filed since 2008 with Mr. Martin as attorney of record, only THREE have so far made it to registration. 172 are dead without ever reaching registration. The other 62 are alive, but one wonders for how long.[1] Presumably, his clients have paid over $65,000 in filing fees and who knows how much in legal fees.

Lots of the applications he filed died because the owner never ended up using the trademark. Many died because they never had a chance at registration. I know that clients don’t always listen to my advice: They choose to file when the chances of success are low or file an intent-to-use application prematurely. But, the fact that Mr. Martin attempted to register The Starbucks Lawyer for himself suggests that Mr. Martin’s track record isn’t entirely an accident.

[1] As of August 4, 2015, the live applications had this status:

  • 2 had received final refusals
  • 11 were subject to office actions or priority amendments
  • 29 were ITU applications awaiting statements of use, of which had already received 1 or more extensions.
  • 6 are awaiting publication
  • 1 was revived and is awaiting action
  • 13 are awaiting being assigned to an examiner

The Sad Story of the Rainbow Princess

The Trademark Office deals patiently with its share of unusual applicants.

Certainly the most pitiable is Prema Jyothi Light. In 2001, Ms. Light filed two applications to register her “trademarks,” one of which includes 577 words. The other has slightly fewer words and ends with “WIZZLE-WOOS WOO-HOO-HA-HO-HOOS WOO-HOO-YOO-TOOS YOO-HOO-YOO-HOO-TOOS -YOO-HOO-TOOS.”

The applications were rejected on the ground that a long list of words strung together can’t function as a trademark. Really long strings can be trademarks sometimes: TWOALLBEEFPATTIESSPECIALSAUCELETTUCECHEESEPICKLESONIONSONASESAMESEEDBUN. But Ms. Light’s application really was just a list of characters she was going to include in a series of books.

Unsurprisingly, Ms. Light was unable to convince the examiner who first rejected her applications that she should be granted registrations. There followed a dozen more office actions, most of which were attempts by the many examiners who worked on these files to help Ms. Light understand what was being asked of her.

THIRTEEN years later, after days, weeks, and months of time spent by various examiners and judges, Ms. Light’s applications were dead.

Really, though, the applications were dead from the start. Ms. Light never had a chance. She could have saved herself quite a bit of money and time by asking someone first whether there was any chance of success.

Clearly, Ms. Light genuinely believed she was entitled to registrations. She spent over a decade and a small fortune trying to make it happen. It’s really a very sorrowful story.