Friday, July 15, 2005

Leo Stoller and the "MERCHANT OF VENICE"?

Leo Stoller, trademark entrepreneur and frequent TTAB litigant, has already taken on Columbia Pictures regarding its soon-to-be-released movie "Stealth." (blogged here and here; trailer here). He is also opposing the application of Dreamworks to register the mark REX HAVOC for video games and other goods. (blogged here). I'm wondering whether Mr. Stoller has his eye on the Sony Pictures film, "The Merchant of Venice"? (trailer here).

I ask this question because Mr. Stoller owns U.S. Registration No. 2,107,047 for the mark MERCHANT OF VENICE for "restaurants." The registration issued on October 21, 1997, and on September 4, 2003, Mr. Stoller filed a Declaration Under Section 8 in which he verified that the mark "has been in continuous use in interstate commerce for five consecutive years from the date of the registration to the present" and that " such mark is still in use in interstate commerce."

Now I haven't been able to find Mr. Stoller's restaurant in my recent Google searching, but then that may be a result of my ineptness. I thought the specimen of use filed with his Section 8 Declaration might be of help, but not so. The specimen, reproduced immediately below (from the TDR database), merely suggests that the MERCHANT OF VENICE® is in Chicagoland.

Click on picture for larger view

Perusal of that specimen of use, however, leads me to ask, why did the PTO ever accept it? Shouldn't the specimen of use for restaurant services be a menu, an advertisement, a table tent, or something that shows the mark in use in connection with the restaurant? According to Rule 2.62(a)(2), "A service mark specimen must show the mark as actually used in the sale or advertising of the services." In my experience, the PTO is a bit more lenient in accepting specimens of use at the Section 8 Declaration stage than it is at the application stage. But come on! This is ridiculous!

As you know, the 2007 INTA annual meeting will be held in Chicago (my home town), and I'm going to have to find a venue for the 3rd annual "meet the bloggers" event. My favorite restaurant happens to be the original PIZZERIA UNO® at 29 East Ohio.

But wouldn't Leo Stoller's restaurant be an interesting choice? Maybe a TTABlog reader in Chicago can help me find the MERCHANT OF VENICE®. Maybe Leo's vocal group, AIRFRAME®, could perform for us. (See Central Mfg. Co.'s Registration No. 2,137,059, which covers, inter alia, "musical entertainment services by a vocal group."). I haven't been able to find out much about that group either. Once again, the specimen of use that Mr. Stoller filed (along with the Section 8 Declaration) is not very helpful:

Click on picture for larger view

Seriously, though, I think the PTO needs to tighten up its specimen-of-use requirements and it needs to train its personnel to apply those requirements properly. In addition, given the stream of fraud decisions that the Board has issued in the last few years, maybe it's time to change the rule that one specimen per class is sufficient proof of use for the entire class. Maybe the PTO should require a specimen for as many as five items per class, coupled with a requirement that the applicant or registrant state the first use date for each of those items. I'll be writing more about that soon.

Text Copyright John L. Welch 2005. All Rights Reserved.


Post a Comment

<< Home