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.
First Use of Spendology Trademark Overcoming Irrationality: Spendology Blog Post, July 21, 2010
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!
What was the reasoning for the USPTO cancelling your trademark?
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.
That asterisk with no corresponding footnote is leaving me feeling like
Oops! I left an additional asterisk by accident. Thanks!
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.
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.
Hello fellow internet Lawyer,
You are welcome to join us at /r/TheLawFirm
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.
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?
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.
Are you not just changing your name because you know it's better business to make the most of the lawsuit?
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.
Have you sold the story to Hollywood yet?
I think Jason Bateman could play you, and Will Arnette as the evil incompetent PNC guy.
That's not fair to Will Arnette!!
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?
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.
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?
Cookies and cream with real Oreo cookies.
Have you ever had Alexander Keiths beer? You should. Also good luck.
Yes, funny story. My cousin found this beer and brought it to a family BBQ.
Dude I am so sorry I misread spendology as Scientology forgive me?
What was the most challenging obstacle you experienced in founding a company?
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".
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?
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.
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.