Pro Se Plaintiff Files Some Kind of Trademark Lawsuit Against MySpace

For those of you who get a kick out of reading complaints filed by pro se plaintiffs, check out this lawsuit (link here) that purports to be a trademark infringement lawsuit against MySpace, Inc. (“MySpace”) filed on March 20, 2008, by pro se plaintiff Donnell Mitchell (d/b/a Phenomenon Licensing) (“Mitchell”) in the U.S. District Court for the Northern District of Ohio. See Phenomenon Licensing v. MySpace, Inc., Case No. 08-cv-0691 (N.D. Ohio).

The impetus for the lawsuit would appear to be a cancellation petition filed by MySpace with the Trademark Trial and Appeal Board ("TTAB") to cancel a trademark registration that Mitchell obtained for the mark MYSPACE (for magnetically encoded credit cards; magnetically encoded debit cards; sunglasses) on August 28, 2007. See MySpace, Inc. v. Mitchell Donnell, Cancellation No. 92048120 (TTAB Filed Sept. 14, 2007). MySpace also filed an opposition against Mitchell for a pending intent-to-use application for the mark MY SPACE (for banking; credit card services; debit card services; insurance services, namely, writing property and casualty insurance; insurance underwriting services for all types of insurance; money order services; on-line banking services; bonding services; bail bonding). See MySpace, Inc. v. Mitchell Donnell, Opposition No. 91181141 (TTAB Filed Dec. 7, 2007).

Mitchell argues that MySpace, by filing its cancellation petition and opposition, is violating his “trademark and civil rights” by engaging in intimidation and harassment in order to force small business owners like himself out of business. Mitchell also argues that MySpace is committing anti-trust violations by seeking to cancel a mark that MySpace failed to oppose during the opposition phase and because it would give MySpace the exclusive rights to use two generic words “My” and “Space” for goods and services outside the scope of MySpace’s current goods and services. Mitchell seeks an injunction from the court to stop MySpace from “continuing its discrimination.”

In all of the apparent research that Mitchell must have done in order to make his complaint look somewhat similar to what a trademark lawyer would have filed, Mitchell apparently overlooked §14 of the Lanham Act (15 U.S.C. §1064) which provides that a petition to cancel a trademark registration can be filed by any person who believes that he is or will be damaged by the registration of a mark on the principal register (including damage as a result a likelihood of dilution) within five years from the date of the registration and anytime if the registered mark was obtained fraudulently. As such, MySpace is well within its rights to file its cancellation petition. Perhaps Mitchell intended to file a declaratory relief action in order to fight this battle with MySpace in Ohio court rather than the TTAB.

It is interesting that of all the TTAB actions that MySpace has taken against trademark applicants seeking marks with the words MY and SPACE (click here for list notices of opposition filed as well as filed extensions of time), Mr. Mitchell’s application is the single one that slipped under their radar screen and actually got registered (a little surprising once you learn the proseuction history).

Even more interesting (and in my opinion, amusing) is the prosecution history which resulted in Mitchell obtaining his registration – and which also provides MySpace with a great deal of evidence to support its allegations of fraud in its cancellation proceeding.

Mitchell filed his Section 1(a) use-in-commerce application on September 26, 2006, for a variety of goods including computer game programs, magnetically encoded cards, sunglasses, MP3 players, cameras, binoculars, ear plugs, cellular telephones, and electronic handheld units for the wireless receipt and transmission of data that enable the user to keep track of or manage personal information. Mitchell claimed first use in commerce as early as January 31, 1990. The application contained the usual language that “the applicant declares that it is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services” and Mitchell signed the usual declaration regarding statements made in the application. Below is the specimen of use he submitted with the application.

MySpace claims that Mitchell’s specimen of use was never in use, but merely created for purposes of obtaining the registration.

But this is only the beginning.

On October 4, 2006, Mitchell filed a Preliminary Amendment amending the Drawing of the mark for which he was seeking registration from MYSPACE to MYSPACE MOBILE and amending the description of goods and services. The same specimen was submitted and dates of use remained unchanged.

On October 7, 2006, Mitchell filed another Preliminary Amendment amending the owner section to list a non-existent corporation named Myspace Mobile Inc. and listing himself as President and amending the description of goods and services slightly. The same specimen was submitted and dates of use remained unchanged.

On October 15, 2006, Mitchell filed another Preliminary Amendment changing the ownership to Mitchell Donnell L. and amending the description of goods and services slightly. The same specimen was submitted and dates of use remained unchanged.

On October 23, 2006, Mitchell filed another Preliminary Amendment amending the Drawing of the mark for which he was seeking registration from MYSPACE MOBILE (word mark) to MYSPACE MOBILE (with the “mobile” all lowercase letters in smaller font under MYSPACE). The same specimen was submitted and dates of use remained unchanged.

On November 17, 2006, Mitchell filed another Preliminary Amendment amending the description of goods and services to add “Gaming machines.” The same specimen was submitted and dates of use remained unchanged.

On November 30, 2006, Mitchell filed two Preliminary Amendments amending the Drawing of the mark for which he was seeking registration from MYSPACE MOBILE to MYSPACE PREPAID (with the “prepaid” all lowercase letters in smaller font under MYSPACE).

On December 3, 2006, Mitchell filed another Preliminary Amendment amending the Drawing of the mark for which he was seeking registration from MYSPACE PREPAID back to MYSPACE MOBILE (with the “mobile” all lowercase letters in smaller font under MYSPACE).

{I’m not making this up folks –ed.}

On January 10, 2007, Mitchell (as President) filed another Preliminary Amendment amending the description of goods and services to remove “Gaming machines.” The amendment also modified the date of first use in commerce to as early as October 24, 1997. The same specimen was submitted.

On February 5, 2007, Mitchell filed another Preliminary Amendment making a minor correction to the description of goods and services.

On February 26, 2007, the USPTO sent out a non-final office action refusing registration on the grounds of likelihood of confusion over three registered trademarks, two of which are held by MySpace. The Examining Attorney also cited two earlier filed pending applications by MySpace. The Examiner Attorney also informed Mitchell that his proposed changes to the Drawing of his mark were unacceptable “because it would materially alter the essence or character of the mark. 37 C.F.R. §2.72; TMEP §§807.14 et seq.”

On March 1, 2007, Mitchell (now VP) responded to the USPTO’s office action by amending the description of goods and services considerably, focusing on magnetically encoded credit cards, debit cards, and prepaid cards, and sunglasses. According to the response, Mitchell originally amended the drawing “because we were under the impression that we had to submit another name with our original filing due to USPTO pseudo law” (referencing the USPTO’s notice of pseudo marks – in this case, the PTO assigned the case the pseudo mark “MY SPACE” (with a space between the MY and SPACE). However, the response goes on to actually amend the Drawing once again to change it from MYSPACE to MY SPACE. {Again, not making this up –ed.} Finally, the response included several other specimens of use, like the following:



And just when you thought it couldn’t get any better, on March 3, 2007, Mitchell filed two additional responses to the USPTO’s non-final office action. In the first response, Mitchell filed the statement “We wish to again submit under 1(b) instead of 1(a) so that we have a chance to change our my spacecard logos in an effort to not be confused with any other myspace registered names. We're are trying to make sure that our products currently being used in commerce are not being confused with other my space named trademarks in existence.” Then, approximately twenty minutes later, a second response was filed amending his application from a Section 1(a) use-in-commerce application to a Section 1(b) intent-to-use application. In addition, Mitchell submitted a specimen that was merely the words MYSPACE (with the A upside down).
Does anybody else find this as amusing as I do?

On April 11, 2007, the PTO sent out an Examiner’s Amendment following a phone call with Mitchell. The Amendment cleaned up the mess that had been created by Mitchell’s recent responses and put the application in the condition that went on to be published for opposition (on May 23, 2007) and ultimately registered (on August 28, 2007). And by paring down the description of goods and services to just “ magnetically encoded credit cards; magnetically encoded debit cards; sunglasses,” the Examining Attorney withdrew the Section 2(d) likelihood of confusion rejections and the references to the earlier-filed pending applications (a little surprising given the fame of MYSPACE by that time, but that's why we have opposition periods).

MySpace apparently discovered the registration soonafter because the company filed its petition for cancellation less than a month later.

MySpace claims that it has been unable to find any such use by Mitchell of his mark and maintains that Mitchell’s statements that he was using the mark in commerce as early as October 24, 1997 and that the specimens he attached were actually used in commerce are false and constitute fraud on the USPTO. And given the obvious materiality of such allegedly false statements to the USPTO’s determination to register his mark, MySpace maintains the mark should be cancelled.

While not necessarily relevant to the instant cancellation, MySpace notes that Mitchell also sought to register a mark similar to FACEBOOK (but with the C backwards) (the application went abandoned November 29, 2007).

While the allegations of fraud seem most appropriate given the usual circumstances, MySpace also throws in likelihood of confusion and dilution as grounds for cancellation.

One would expect the TTAB, with the aggressive stance that it has been taken lately with respect to fraud, to scrutinize closely Mitchell’s dates of first use and specimens of use. Let’s see evidence that the mark was actually being used on each of the items mentioned in the registration as early as October 24, 1997. After all, Mitchell’s registration is only prima facie evidence of his ownership of the mark and right to use the mark. MySpace will certainly be able to make out a case that Mitchell was not using the marks on the goods set forth in the registration on the dates he claims. In such case, if Mitchell cannot set forth evidence proving his use on the dates asserted, his registration will almost certainly be cancelled.

And why am I not surprised that Mitchell's own domain forwards to http://www.my-spaceship.com/?