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IamA Keith Alexander Ashe, CEO & Founder of Spendology. I am representing my company on my own in a trademark dispute against one of the largest banks in the US. AMA!

Oct 26th 2014 by spendology • 27 Questions • 1689 Points

My short bio: Spendology is a tech company that develops content, software, and services that activate financial intelligence. I founded Spendology back in 2010 with the goal of creating smart online financial calculators. My company used and applied for the SPENDOLOGY trademark first; then, PNC Bank applied for the same mark 8 months later and then succeeded in canceling my company's trademark application. Despite initially having a lawyer and then interviewing, hiring and firing man lawyers, I ended up personally representing my company before the US Patent and Trademark Office's Trademark Trial and Appeals Board.

My own legal research revealed that there are common law rights in addition to federal registration rights. Moreover, the Supreme Court will be hearing a landmark trademark case on December 2, 2014. This case will determine if Federal District and Appellate courts need to give deference to USPTO decisions on trademarks. This will directly impact the case between Spendology and PNC.

My Proof:

Spendology Spendology on Twitter Spendology Founder, Keith Alexander Ashe

First Use of Spendology Trademark Overcoming Irrationality: Spendology Blog Post, July 21, 2010

PNC Bank Current Use of Spendology Trademark

USPTO Trademark Trial and Appeals Board Opposition Proceeding Spendology LLC vs. The PNC Financial Services Group, Inc.

SCOTUS Landmark Trademark Case B&B Hardware, Inc. v. Hargis Industries, Inc.

Starting at 3:30 pm Eastern

UPDATE: You guys have been amazing. I am going to wrap up the IamA. I really want to thank you for your great questions and your support. Thank you Reddit!

Q:

What was the reasoning for the USPTO cancelling your trademark?

A:

My company submitted a trademark application on October 25, 2011. PNC Bank submitted an application on June 12, 2012 for the same trademark. The next day they sent me a cease and desist letter. In October 2012, PNC Bank filed a Notice of Opposition with the USPTO Trademark Trial and Appeals Board. An Opposition proceeding is like a lawsuit in administrative court. It typically costs $250,000 to defend. My lawyer at the time couldn't do it. I didn't have a quarter-mill handy so I defended myself. The USPTO Trademark Trial and Appeals Board ruled in favor of PNC even though I used the trademark first.


Q:

This Tweet from PNC is dated January 20, 2011. It references Spendology and labels it as a Service Mark of PNC. That seems to predate your trademark application? It seems they've been using that term for quite some time.

A:

Yes, my company started using the trademark on July 21, 2010. My company initiated activities (advertising, marketing, events, surveys, etc.) in May 2010 that demonstrate use analagous to trademark use. PNC claims to have started using the same mark in August 2010 based on their publicly available trademark application. According to the law, analagous use trups use in commerce. Source: Nixon Peabody paper on Trademark Priority


Q:

Looking into this more, it appears that your sole use of the the term "spendology" on July 21, 2010 was to mention it on the blog post you provided. According to this article that is why you lost the case.

the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board held that the applicant’s creation of a social media presence was not enough in and of itself to create trademark rights in determining the priority of a contested mark.

[...]

The applicant claimed constructive first use as of Oct. 25, 2011, the filing date of the applicant’s federal service mark application. The opposer’s evidence established a first use date of Aug. 26, 2010. In response, the applicant attempted to prove an earlier first use date based on alleged "use analogous to trademark use." To support this argument, the applicant offered as evidence its having joined Twitter and its tweets about its mark, its creation of a Facebook page, and its blogging about its mark.

So basically, you said you had rights to it as of October 25, 2011. They showed evidence they have been using it since August 26, 2010. Then you brought out a blog post where you mentioned Spendology on July 21, 2010 and they said, "sorry blog post no good".

Is this the case in essence?

A:

Excellent point. There were also other uses that included advertising, marketing, events, and surveys. The legal precedence set by a Federal Appellate court is that all of the actions of the company need to be considered and not single actions or events in isolation, e.g., put the "pieces of the puzzle together". The puzzle language was used by one of the judges that set the legal precedence which made analogous use > use in commerce.


Q:

According to the TTAB, you offered "tweets about [your] mark", the "creation of a Facebook page", and "blogging about [your] mark." If you had additional evidence concerning this "advertising, marketing, events, and surveys" that you keep mentioning, why would you not present that evidence to the TTAB?

Honestly, without research, I can't say for sure whether your arguments have merit. But if you didn't present adequate evidence during your case, then it doesn't really matter--the TTAB can only rule on what they have before them, and social media posts clearly aren't cutting it to establish constructive use.

A:

The additional evidence was presented confidentially to the TTAB. The TTAB took each piece of evidence and evaluated it in isolation rather than combining the "pieces of the puzzle".


Q:

That asterisk with no corresponding footnote is leaving me feeling like

A:

Oops! I left an additional asterisk by accident. Thanks!


Q:

I don't really understand the means by which this was allowed to happen to your invention/company.

This completely goes against the logic that created the USPTO and the logic behind the way they are supposed to function.

A:

You are correct. The spirit and the letter of the law stipulate that the first company that demonstrates only an "intent to use" a trademark for business gets priority rights. This is an example of regulatory capture. We all work for Corporate America now. Yet, I am not waiving the white flag just yet. A similar case is headed to the Supreme Court this December. Moreover, I can also sue PNC in Federal court. It's no easy feat but it's the right thing to do.


Q:

Hello fellow internet Lawyer,

You are welcome to join us at /r/TheLawFirm

A:

I do believe that the game is rigged. I cannot state nor support an allegation that this is what specifically happened. I can say that a group of 5 year olds could have reached a more appropriate ruling. Nonetheless, a big case is headed to the Supreme Court on this December 2, 2014 on this very issue (weight of USPTO Trademark Trial and Appeals Board decisions on Federal District and Appellate court cases). My company will eventually have its day in court and we will see what a jury has to say about all this.


Q:

Seems like this case comes down to your and PNC's 'constructive first use date.' I do think that this is an important consideration in the validity of any trademark to prevent someone from swooping in and stealing a brand/business/customers from another rightful organization. What evidence do you have that your constructive first use date was prior to PNC's?

A:

Great question. There are different tiers to assigning constructive use dates. This Nixon Peabody paper on Priority shows the hierarchy. Analogous Use > Use in Commerce.


Q:

Are you not just changing your name because you know it's better business to make the most of the lawsuit?

A:

I'm not changing the name on principle. I conducted due diligence, performed a search and learned that no business was using it for my firm's class of goods when I started. I applied for trademark protection first. PNC Bank can feel free to stop using my company's name any time.


Q:

Have you sold the story to Hollywood yet?

I think Jason Bateman could play you, and Will Arnette as the evil incompetent PNC guy.

A:

That's not fair to Will Arnette!!


Q:

Do you think maybe you shouldn't be representing yourself in these cases? Might be why you lost.

A:

Great question. The advice that I received from my lawyer at the time was to just give it up. The expected cost to defend an administrative lawsuit by a good law firm is $250,000. The cost is $80,000 for a small law firm. My company really didn't have the cash flow to fight Goliath with this choice of weapons. However, we could fight like David.


Q:

Didn't mean to sound negative, just one more question I agree with your plight, but do think it is time to let it go and start your next endeavor? You are obviously a smart guy why waste your time on this, why not focus on something new? Good luck!

A:

Excellent point. Spendology has expanded into new areas throughout the years. I held on to my day job while figuring out which product-customers matches would work best. Right now, Spendology's Finio Business segment has picked up a lot of business. We are providing consulting and custom software development to businesses and organizations.

This is very different from the online financial calculators we started out with. Yet, the name Spendology is sort of lie a child that I gave birth to years ago. I am fighting because I believe that I am right. I also want to encourage future entrepreneurs to fight and not just lay down when Big Corporate comes calling.


Q:

Do you think it's a good idea to post all this about your case before your trial begins?

A:

The trial in front of the USPTO Trademark Trial and Appeals Board is over. Only publicly available information is being shared.


Q:

I've been through something similar. What resources are you using for research? Do you still seek legal counsel, even if you have no attorney on retainer to represent you?

A:

First of al, sorry to hear that. I don't wish this on anyone. I have still sought out legal counsel. I get every response from them not seeing merit in the case to not being serious about defending my firm's rights. At some point, you have to conduct research, get as much legal feedback as possible, and decide what is best for you and your company.


Q:

I don't have a question, but I think it's good that you're standing up to a bullying corporation despite the odds.

Um... What's your favourite ice cream?

A:

Cookies and cream with real Oreo cookies.


Q:

Have you ever had Alexander Keiths beer? You should. Also good luck.

A:

Yes, funny story. My cousin found this beer and brought it to a family BBQ.


Q:

Dude I am so sorry I misread spendology as Scientology forgive me?

A:

No worries.


Q:

What motivated you to fight and how much time and preparation does it take for you to represent your company?

A:

My approach to any problem is akin to moving a mountain. You can do it one rock at a time. I break down every project into bite-sized tasks and then proceed with deadlines in mind. I also start from a point of complete ignorance and educated myself like a stranger in a foreign land. I have thought about quitting several times. Watching the filk 12 Years a Slave changed that. Solomon Northrup sued the people that kidnapped him while slavery was still illegal. He did so on principle. What's my excuse not to fight for my rights?


Q:

What was the most challenging obstacle you experienced in founding a company?

A:

Believing that I had the skills or could develop the skills to create products and services that make people's lives better. For every "yes" I hear, I've heard hundreds of "no's".


Q:

I, firstly, commend you on your drive to fight big business. I respect how you decided to defend yourself rather than just giving it up, which is probably what they wanted/expected. Besides getting to keep your trademark, are there any other benefits of winning this dispute than just the obvious?

A:

I want to encourage other folks on Main Street to fight for their rights. They are only "your rights" if you actively assert them. Moreover, I want folks in the Ivory Tower to think twice before messing with the little guy.


Q:

Are you worried that PNC will use its massive power and influence to bribe officials or otherwise make the case disappear? I'm not saying that PNC is a dishonest company, but I also don't trust companies that large not to have their hands in the pockets of influential people.

A:

I should also mention that the ruling by the USPTO TTAB seems like this sort of result. Trademarks have common law rights in addition to rights given from Federal registration. There have been many cases that dealt with who had priority rights over a trademark. The analogous use doctrine stipulates that the bona fide intent to use a trademark in commerce trumps use in commerce. Thus, the upcoming Supreme Court case will have an impact on the matter with PNC.


Q:

Any advice for a 17 year old?

A:

Invest time in figuring out what you LOVE to do. Then, do research (Bureau of Labor Statistics, Google, adults,) to find out the careers that align with your passion. Next, find out if you can do what you love or something close to it at a minimal cost, e.g., trade school vs. 4-year college, state school vs. private school, etc. Start saving early. Make it a habit.


Q:

I am a pnc bankee, should I reconsider where I'm putting my money?

A:

I can't tell you what to do with your money. That's a personal decision.


Q:

Do you like peanut butter?

A:

Love it! Who doesn't?


Q:

Ever thought of investing in Cryptocurrency? Such as Dogecoin or Bitcoin?

A:

I really love to write about cryptocurrrencies. I've written a few popular posts about bitcoin. Some of the posts get negative comments because it may seem like I am speaking ills of the cryptos. However, I think bitcoin can become a viable alternative currency if specific changes are made to increase trust.


Q:

Do you play videogames? If "yes", which ones?

A:

Yes! Call of Duty, God of War, Madden, NBA, NCAA Football/BBall are my favorites. For some reason, I like to play Call of Duty Zombie version to break up my coding sessions. It keeps me productive.


Q:

How awsome is your job compaired to everyone else?

A:

I wouldn't call it awesome. I would not wish the perils of entrepreneurship on my worst enemy. I held on to a day job while starting up Spendology. It did make growth and traction very slow. However, I am finally starting to see some big contracts for strategy consulting & custom software development that will enable me to transition to working on Spendology full time. The hard work will certainly be worth it but there were many sacrifices along the way.