Leason Ellis LLP has sued a scammy “trademark protection”firm that will “register” your trademark in its “catalog” for the low, low price of under a thousand dollars a year, alleging state and federal false advertising. I’m all for the bulk of the claims in the lawsuit, but I was disturbed by the non-false advertising Lanham Act allegation:
The foregoing acts and conduct … have caused and are likely to cause confusion, to cause mistake, and/or to deceive the public, including clients of Plaintiff, into mistakenly believing that USA Trademark and its activities are authorized, endorsed, sponsored or approved by Plaintiff, the trademark bar, and/or the USPTO, or that USA Trademark and its activities originate with, are connected with, or are associated with Plaintiff, licensed trademark counsel, and/or the USPTO.
Look, defendants are fraudsters. They are engaging in false advertising. But trademark-like false affiliation claims are the wrong form of attack for this plaintiff, which lacks standing to claim false affiliation with the PTO or “the trademark bar” and which should know better than to claim that merely sending a solicitation suggests affiliation with a current provider. Consider this theory as applied to a legitimate competitor who offers to provide a client with a service already being provided by someone else. If the fact of the overlap is enough to allege confusion, we ought to give up on competition now. If the solicitations said something like “in connection with your current counsel, we offer …” or “invoice for the services we’ve already provided you,” then that could be a different matter, but the ones attached to the complaint didn’t as far as I saw. I expect some recipients are confused—that’s how defendants make their money, after all. But false advertising completely and without overreaching addresses the harm to competition caused by defendants’ fraudulent suggestions that they can provide trademark protection and by their deceptive quasi-“invoices,” and it does so without stretching the concept of affiliation confusion to “do I need to pay this?” confusion. We have universities arguing that depicting them causes confusion over source, and now law firms arguing that not mentioning them causes confusion over source. Enough!