Dear Client, I’ve thought about this article for a very long time.
This is part 3 of 4, of my retirement series.
Here’s 1) April 23, 2025 https://conta.cc/4jJOPry, and 2) April 25, 2025 https://conta.cc/4jss77J.
To the best of my very experienced knowledge of 33 years in the field of trademarks, the following is true and correct. If anyone has a correction, I’ll gladly publish it here within 72 hours. Let’s have it.
I want a constructive conversation about how to FIX THE WORLD OF TRADEMARKS.
Too many small business start-ups are damaged. Today’s environment hurts capitalism. Every trademark service and attorney alike should be on the same page. I prefer tomorrow over never.
What happened to the trademarking experience? When? Why? The collapse. The demise. The ruining of a ecosystem that worked. How did getting a trademark come to be like it is today? A gamble, a crap shoot – down to being lucky if your trademark application reaches registration AND isn’t ceased and desisted, over the next 10 years. Lucky your mark was clear in any case, because 60% just plain are. Lucky you hired one of the few trademark services or trademark attorneys who cared to do their job in legally clearing your name, slogan or logo with comprehensive research – before use – before trademarking. Lucky you happened to meet an ethical trademark attorney, a competent trademark service.
Again, before 2010 everyone offered comprehensive clearance legal research. Everyone recommended comprehensive clearance legal research. Everyone did comprehensive clearance legal research. No lies. No fake information. No under delivery.
I can prove what I am saying. Try me. The proof is out there right now. Just ask. Just ask whoever you are considering to get your trademark. Ask whoever did your trademark. Here’s 18 questions, I wrote years ago, as we had many doubting Thomas inquiries who were hearing all kinds of different things when it came to getting a trademark. See the end of this missive.
Some people came back to TradeMark Express and hired us. Some didn’t. All seemed dazed at having to figure out who to believe. THIS IS NOT THE WAY AN ENTREPRENEUR ENVISIONS OPENING A NEW BUSINESS. Some, after multiple follow-ups admitted they decided not to open their planned new business. Was their quest to get a trademark, to clear a name the reason? Maybe. Maybe not. But, who goes as far to inquire about getting a trademark unless they were serious at that point in time? I’ll venture almost all were.
So, to answer the question “What happened to the trademarking experience?”, In my opinion it simply it all comes down to a competitor, RAJ ABHYANKER. So, you can find him, look for his 2 trademark firms, TRADEMARKIA and LEGALFORCE.
In 2010 Raj started Trademarkia, located just 2 miles South of our office, on our own street, El Camino Real in Mountain View, California. Trademarkia was an ATTORNEY firm offering trademark application services for just $159.
I capitalize ATTORNEY, because with the achievement passing law school passing the bar exam, in this case, the California bar exam – the toughest in the USA, people have TRUST that anyone saying they are an attorney HAS ETHICS, WILL PROTECT THEM FROM HARM, WILL ACT IN THEIR BEST INTERESTS.
Every law school has mandatory ethics classes. Every bar exam has ethics questions. All the State Bars have ethical standards.
So, why would an ATTORNEY, offer a trademarking service, EVER SO CRITICAL to their needing clients, for just $159?
Here’s Trademarkia’s first operational web site, on September 27, 2009, offering a $159 trademark service SANS ANY LEGAL RESEARCH WHATSOEVER – https://web.archive.org/web/20090923074958/http://www.trademarkia.com/trademark/trademark-services.aspx. (Allow ~10 seconds for the redirect.)
Here’s TradeMark Express on September 16, 2009, when we offered our Premium Package for $450 – https://web.archive.org/web/20090722025919/https://www.tmexpress.com/index.php. (Allow ~10 seconds for the redirect.)
Note, our claim at the time was we were $850 less expensive for the 8 hours of work than a trademark attorney, for like work, needed to secure a clear trademark. Like trademark services were around our $450 fee. Our advantage was that we were a couple days faster, did step-by-step legal research and had a network of attorneys included for analysis of the 400 to 600 page legal reports. (Nowadays 600 to 800 page legal reports.) See the article about Tom Cook in 1994 @ https://conta.cc/4jss77J. That is how TradeMark Express was different, was better. Today, we still are, BTW!
Even Trademarkia’s grayed out, micro type, disclaimer doesn’t cut it. See next paragraph. First, they compare their service to what a trademark attorney does for $266/hour in 2009, to what they are offering. Then they admit they were started by trademark attorneys yet try to give the impression the trademark attorneys have left the building. So, therefore they are not responsible for whatever calamity happens next in their wake. Like rats leaving a sinking ship, after gnawing their way through the ship’s hull. See the bottom of the Trademarkia 2009 order page:
In my case defending myself against Raj Abhyanker / Trademarkia / Legalforce, I used to say to the judge Maxine Chesney, (https://cand.uscourts.gov/judges/chesney-maxine-m-mmc/), in court and my filings I often said, Raj is the guy who creates the accident, then circles the block after the ambulance shows up to offer his card to the person run over. Voracious, MF’ers considering the sinister monetary greed grab at play here was how I view Trademarkia.
Especially when you consider Raj Abhyanker IS a trademark attorney. He KNEW all the time, every attorney, every service, at the time in 2009, ALL really did comprehensive clearance legal research, YET he still started this sham of a service, called Trademarkia. RAJ ABHYANKER KNEW LEGAL RESEARCH IN 2009 WAS NEEDED FOR EVERY NEW BUSINESS START-UP and EVERY NEW TRADEMARK APPLICATION, YET STILL OPENED TRADEMARKIA.
But wait there’s more! No one can escape the fact some other company may have first use rights, under common law, or have a State trademark or have a Federal trademark. Similar names, in sound, appearance and meaning matter. Related goods and services matter. Channel of distribution matters. Famous names and over reaching litigious services matter. These “little issues” don’t magically disappear because some mercenary attorney wants to break the model which worked really well for decades. See https://en.wikipedia.org/wiki/United_States_Patent_and_Trademark_Office. Searchable databases were created in 1920. See prior “Retirement?” article @ https://conta.cc/4jJOPry.
So, as time passes by, about 9-10 months later, the inevitable happens. About 62% of clients who trusted Trademarkia, got Office Action refusals for all kinds of things, like Likelihood-of-Confusions, bad specimens, bad goods/service descriptions, merely descriptive filings – were the main reasons. Guess what? Good news! Surprise! The attorneys who were not “really in the picture”, came out of the shadows to offer their immense experience in fighting these “not really so surprising refusals. Not out of the goodness of their hearts, because “there’s just no way these refusals should have happened”, “just no way”, “no no no way!”. More bullshit.
People who fold businesses aren’t anxious to talk about their bad memory, bad experience. One example in my defense was TOOTHFAIRYSHOP LLC, of San Marcos, California. Yes, I drove 453 miles to knock on the owner’s residential door. Luckily I wasn’t shot at! In 2017, TOOTHFAIRYSHOP LLC filed 2 NO PRIOR RESEARCH trademarks through Trademarkia. Both FROST and FROST COMPLETE TOOTHPASTE trademark applications were refused by the USPTO for conflicting with Colgate-Palmolive’s, 2001 trademark filing. It is still live today, FROSTY MINT – See https://tsdr.uspto.gov/#caseNumber=78086447&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch.
Trademarkia asked TOOTHFAIRYSHOP LLC to pay $950 to fight the first USPTO Office Action refusal for each mark. They negotiated a $650 fee to argue just FROST COMPLETE TOOTHPASTE. Then when the USPTO offered a second and final Office Action refusal, Trademarkia wanted another $950 to argue again. The USPTO allows 2 chances to argue any Office Action. Need specifics? The client in this case invested $30,000 with 2 friends for a toothbrush and dental subscription kit, like Harry’s Razors shaving kit – https://www.harrys.com/en/. I believe they made 40,000 units. So they were all in after they filed their trademark with Trademarkia. Don’t believe this? Just look at the evidence given to the Federal Court in San Francisco. See: https://tmexpress.com/raj-abhyanker-trademarkia-legalforce-62-trademark-failure-rate/.
FROST (SN87413891) – https://tsdr.uspto.gov/documentviewer?caseId=sn87413891&docId=OOA20170715193443&linkId=5#docIndex=4&page=1
FROST COMPLETE TOOTHPASTE (SN87414086) – https://tsdr.uspto.gov/#caseNumber=87414086&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch (BTW – Not really a LOGO DESIGN btw.)
Are you noticing the $$$ Colgate-Palmolive is saving BECAUSE they thought to trademark the name FROSTY MINT? The USPTO protected their first use, their broad trademark rights, the integrity, the value of a brand they invested in 2001, namely FROSTY MINT. “Thank you USPTO!”, says the multi-national Colgate-Palmolive, who is probably way bigger than the USPTO. All for a mere $325 in 2001.
THERE’S MORE! A year later, on July 2, 2018, TOOTHFAIRYSHOP LLC hired Trademarkia again to file a new trademark, TOOTH FAIRY SHOP. Again, the owner told me Trademarkia did NO LEGAL RESEARCH, none, nada – even after their two 2017 filings were found to be BLOCKED by Colgate-Palmolive. Do you know how many USA trademarks Colgate-Palmolive has ever had? Correct if you said 3082. Here’s the refusal:
TOOTH FAIRY SHOP (SN87740256) – https://tsdr.uspto.gov/documentviewer?caseId=sn87740256&docId=OOA20180418200333&linkId=2#docIndex=1&page=1.
Let me add another fun fact. When you file ANY trademark, Worldwide in fact, that government agency expects you to have ALREADY DONE the legal research to clear the name, logo or slogan you are filing. So, when you file for a Federal trademark at the USPTO, know they cannot, by statute, do a compressive search in any of the 50 States who offer trademarks or Common Law first use right holders. These Common Law and State trademark owners, PLUS the Federal trademark owners who THINK you are infringing on their prior trademarks have 5 years to cease and desist you. Ten years if YOU do not buy the USPTO offered Section 15 Incontestability, as offered after 5 years. Today’s rate is $250/class.
Are you still with me?
This has been one hella long Sunday.
There’s a million things I’d rather be doing than writing this.
Ok, I’m exaggerating, maybe a few hundred things.
Last, but not least – How do I know all this?
(Let alone the time of day?)
I can say this because I lived through it.
I can say all this because Trademarkia would sometimes have a client who knew the time of day and demanded actual COMPREHENSIVE CLEARANCE LEGAL RESEARCH.
So, what did Raj Abhyanker and the staff at Trademarkia do?
Yes, they hire TradeMark Express to do this NEEDED RESEARCH, before investing and before ever filing a new trademark.
From 2010 to 2015, for 5 years we did the occasional Trademarkia client research, so they could do the filing – IF CLEAR. Yes, they called one of our trademark attorneys in our network for very borderline, tricky research results too. They used our white labeled research reports when their clients demanded it. I think they were charging $169 then. They played with pricing, from $99 to $199(?), because they wanted to secure the clients into their renewal machine, sell more trademarks because they were dirt cheap, then fight the battles when they arose – an Office Action refusal and cease and desist. Then they could jump from behind the curtains to proclaim GIVE US YOUR $950 and we’ll be trademark attorneys today, for you!
COUNTER CLAIM .V LEGALFORCE, RAJ ABHYANKER and TRADEMARKIA.
In my defense, I wrote a counter claim. I could not afford a $20,000 attorney. Please see:https://tmexpress.com/raj-abhyanker-trademarkia-legalforce-counterclaim/. For TOOTHFAIRYSHOP LLC comments please see pages 12-14, and 16-17.
Over a 2-year period, 5 years before the case, I’d visit Raj’s office down the street on my way home. I’d go every few months to ask him in person to hire us for all his clients, as surely he was seeing tons of Trademarkia refusals. I knew. He knew. He just wouldn’t admit it. His business model was working just fine – NOT ADVISING CLIENTS – to do comprehensive clearance legal research. A year later, he started offering comprehensive clearance legal research too. On the Trademarkia web site application only services were offered next to comprehensive research packages. These were evenly presented, “if you want to”, kind of in a lip service way, to claim “yes, we offer comprehensive research too, you could have bought it. My point is there wasn’t any guidance. Even when called, Trademarkia‘s staff gave no recommendation about the need to do research. Trap. Shame.
Writing should depress me to hell.
Instead I feel rejuvenated.
—–
Thank you,
Chris DeMassa, Founder – 650-948-0530
Email: staff@tmexpress.com
Web Site: tmexpress.com
Order: https://www.tmexpress.com/order-my-trademark
Creative Naming – http://miramark.com/nameit/
Zoom Anytime – https://bit.ly/TradeMarkZoomMeeting
Calendly Meeting – https://calendly.com/tmexpress/15min
TM®SM Crash Course – https://www.youtube.com/watch?v=3gWaAJR5L18
12 Expert Trademark Attorney Network Included.
LinkedIn – https://www.linkedin.com/in/chrisdemassa/
Ask about our $1000 Trademark Challenge.
Blog Articles – https://tmexpress.com/trademark-blog/
Testimonials – https://tmexpress.com/testimonials
TrustPilot – https://bit.ly/TrustpilotRating