Urban Homestead as a Trademark | Known in the Marts

The ABA Journal (the magazine for the American Bar Association) has written about the Dervaes Family and the fight to keep its ?Urban Homestead? trademark registration. Although the story is good, even more interesting are the comments, which feature multiple arguments by someone name ?marie? and also Sundari Kraft, the author of The Complete Idiot?s Guide to Urban Homesteading. Marie, is a passionate defender of the Dervaes family, and pleads that its enforcement efforts are quite benign:

First of all, according to the Dervaes, the letters were not a ?legal notice? as it was sent by Jules Dervaes, not an attorney. According to the Dervaes it was a informational letter telling others about the newly acquired trademarks. It was others who have attributed motives and the scope of the letter and misinterpreted its contents.

If the letters she is referring to (there are may also be other letters sent by the Dervaes Family?s attorney that are more strongly worded) are anything like the letter posted on the Dervaes Family?s Path to Freedom website, the ?information? provided is not all that friendly, or suggestive:

In addition, Dervaes Institute owns numerous trademarks which should be properly acknowledged if used. These protected names and images include the following registered trademarks:

URBAN HOMESTEAD?
URBAN HOMESTEADING?
PATH TO FREEDOM?
GROW THE FUTURE?
HOMEGROWN REVOLUTION?
FREEDOM GARDENS?
LITTLE HOMESTEAD IN THE CITY?

Also, THE TEN ELEMENTS OF URBAN HOMSTEADING copyright has been filed with the Library of Congress.

If your use of one of these phrases is not to specifically identify products or services from the Dervaes Institute, then it would be proper to use generic terms to replace the registered trademark you are using. For example, when discussing general homesteading or other people?s projects, they should be referred to using terms such as ?modern homesteading,? ?urban sustainability projects,? or similar descriptions.

Even though the words ?cease? or ?desist? are not present in this letter, the intent is clear: the Dervaes Family is asserting exclusive legal rights to ?urban homestead? and ?urban homesteading? and directing others to substitute other terms for its registered trademarks.

Elsewhere in the comments, two attorneys chime in. Paul Keating, a trademark lawyer residing in Barcelona, places the controversy in the context of free speech rights:

This entire comment string clearly shows many of the problems with today?s trademark registration system and the problems it causes. All too often obvious terms are registered. The USPTO should, IMO more aggressively enforce the registration process and the presumptions (which currently favor registration) should be reversed. The declaration at the bottom of each application should be more strictly viewed by the courts. The applicant should be required to actually sign it (not his/her attorney). How could the applicant in this case, for example, assert that they have any exclusive rights in the term?

The biggest issue here, however, is in the enforcement side. Take-down notices are easy to write and the recipients default to complying to avoid liability. This places the burden upon the third party who in the meanwhile had their site, blog, etc, terminated.

Trademarks are an exception to free speech. The original intent was to prevent consumer confusion. They are not, and should not be considered to be, a property right. I am personally becoming concerned at the degree to which the pendulum seems to have swung in favor of IP rights holders in general. It does not bode well for society and all of the overly aggressive tactics being used will hopefully soon come home to roost.

(I?m not sure, however, that the prevention of consumer confusion is trademark law?s sole reason for being. Trademark law may have always been intended to prevent unfair diversion of business and goodwill.)

TiM Atty raises the point that the examination process is fallible and that cancellation petitions function as a backstop against that fallibility:

Marie, I don?t know whether you practice in TM law or not but, if not, I?m impressed by your researching of the subject. However, I felt I had to comment on your statement in 30 that ?The USPTO NEVER legally registers a generic word. That?s a legal impossibility.? That statement is either completely incorrect, or I?m misunderstanding your use of the word ?legally?. The USPTO registers generic terms regularly, and it?s completely legal. The TM Examiner?s can make mistakes either by not researching a term thoroughly or not having access to the industry information in order to provide the evidence for the genericness refusal. It?s an evidence-based process and there is nothing illegal about registering a generic mark, it?s just a mistake. But that?s part of the reason for cancellation proceedings. So people in the industry can cancel a generic term if they have standing.

What is a cancellation proceeding? An owner of a trademark may file a petition of cancellation with the Trademark Trial and Appeal Board, which is an administrative court that makes decisions about federal trademark registrations, to cancel another party?s registered trademark if that registration harms, or will harm, its own mark. Depending on how long the mark has been registered, the cancellation petitioner can challenge the registered trademark for different reasons. If the mark is not yet incontestable (the registration is less than 5 years old), the challenger may seek cancellation of a registration because it is similarly confusing to the challenger?s mark or the mark is descriptive and has not acquired distinctiveness.

A registration may be cancelled at any time, even if it has become incontestable (has been registered for 5 years or more), for the following reasons: it?s functional or generic; it?s been abandoned; the registration was obtained fraudulently; it?s immoral, deceptive, scandalous or disparaging; falsely designates the origin of alcoholic drinks; incorporates or uses any governmental insignia; or uses the name, likeness or signature of a living person; or if it misrepresents the origin of goods or services. Collective and certification marks may also be cancelled for reasons specific to those types of marks.

Kelly Coyne and Erik Knutsen, authors of ?The Urban Homestead,? petitioned to cancel the ?Urban Homestead? and ?Urban Homesteading? registrations on the grounds they were descriptive, generic, didn?t have acquired distinctiveness and were obtained fraudulently. Their petition:

Petition to Cancel ?Urban Homestead?

Cancellation proceedings before the TTAB are similar to court proceedings and the owner of the challenged registration has an opportunity to respond. The Dervaes Family?s answer:
Dervaes Answer to Cancellation Petition

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I?m an attorney licensed in Oregon and California, where I focus my practice on trademark registration, infringement disputes, TTAB proceedings, copyright matters and internet law. Thanks for visiting. Any content in this post is for informational purposes only and cannot be relied on as legal advice. For more information about my practice, please visit Jeffrey Armistead LLC.

Source: http://knowninthemarts.com/2011/08/urban-homestead-as-a-trademark/

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