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

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