Florida IP Trends

This one is a real headscratcher.  I have to make an initial disclaimer before diving in – my firm is currently representing a defendant in an unrelated case brought by the same plaintiff in this case.  This post reflects my personal opinions and is not related to any issues in the case I’m working on with the firm.

With that said, Florida IP Trends presents:

Stevo Design, Inc. v. Brandon Link,  Case No. 1:2010cv24283 (SDFL December 1, 2010)

Complaint| Exhibit A |Exhibit B

According to the complaint, “Stevo Design provides sports handicapping services. In general, handicapping is the practice of assigning advantage through scoring compensation or other advantage given to different contestants to equalize the chances of winning…Stevo Design operates over 7 internet-only sports handicapping brands, and services over 10,000 unique clients worldwide. This is accomplished online via pay-per-view sports analysis and selections, or what is commonly known as providing ‘Sports Picks’. Stevo Design employs more than 15 full-time sports handicapping professionals to analyze games and sporting events on a daily basis throughout the year and deliver their opinions and rated selections to clients.”

Several years ago, a movie was made about the world of sports handicappers. The film was called Two for the Money, and it starred Al Pacino, Matthew McConaughey, and Rene Russo.  One of the main characters was based on a Stevo handicapper named Brandon Link.  As far as I know, Brandon Link is Brandon’s real name.  However, in the movie, Mr. Link is named “Brandon Lang.”

Sensing marketing opportunities, Stevo submitted a service mark application to the U.S. Patent and Trademark Office (“USPTO”) for the mark “BRANDON LANG” for the following services: “Handicapping for sporting and other entertainment events.” The application was submitted March 15, 2007, and a registration ws issued on June 17, 2008.  The registration information may be viewed HERE.

It’s somewhat rare, but not unusual, for a living person’s full name to receive a trademark registration, but given the obvious boost in visibility that the movie would bring to Stevo’s services, it makes sense that Stevo would want to protect the Brandon Lang “brand.”  Following the success of the movie, Brandon Link continued offering his handicapping services under the Brandon Lang name.

As alleged in the complaint, at some point the relationship between Brandon and Stevo broke down.  The details are in the complaint, but ultimately, the parties decided to part ways.  They signed a separation agreement, and one of the counts in the complaint is based on Brandon’s alleged breach of that agreement.

The reason that the case is appearing on Florida IP Trends is because of the unique trademark infringement issue – specifically, infringement of the registered BRANDON LANG mark.  The infringement is allegedly based on Brandon’s use of the BRANDON LANG name in providing handicapping services and in the use of Brandon’s website, which is located at www.therealbrandonlang.com.  Stevo runs www.brandonlang.com.  [12/7/2010 UPDATE:  I noticed that one of the search terms used to hit Florida IP Trends was “brandon lang, website cancelled” so I checked out both sites.  It does appear that therealbrandonlang.com is currently down.  Perhaps settlement talks are underway.]

Sharp readers are probably scratching their heads at this point.  That’s right, The case is Stevo Design v. Brandon Link.  Brandon Lang is a fictional character in a movie.  (I couldn’t find any fictional name/dba’s in the Florida Secretary of State records.)

So, doesn’t Stevo still have the right to prevent others from offering services under a trademark registration owned by Stevo?  Absolutely.  But here’s the problem.  In order to obtain a trademark registration for a personal name, the applicant must inform the USPTO if the mark does indeed identify a particular living individual, and if so, then that living individual must submit a signed consent statement indicating that he or she consents to their name being used in the trademark application.

As THIS document shows, on June 23, 2007, the USPTO Examining Attorney followed proper procedure by asking Stevo if Brandon Lang was a living individual, and if so, then a consent form was required.  If Brandon Lang was NOT a living individual, then Stevo was supposed to reply as such.

Responding three days past the six month deadline for a response, on December 26, 2007, Attorney Mark Jordan submitted a signed consent form from “Brandon Lang.”  You can view the form HERE (see page 3).

Say huh?  Sure as heck, on Christmas Day, 2007, one “Brandon Lang” signed his name to a form indicating that he consented to his name being used in the trademark application.

I’m no Columbo, but I had a hunch.  Luckily, one of the exhibits to the Stevo v. Link complaint is the separation agreement signed by Brandon Link.  Let’s compare Mr. Link’s and Mr. Lang’s signatures:

Rut-ro.  I’m also no handwriting expert, buuuuuuut…..

So here’s the problem.  If there is no living individual named Brandon Lang, and Stevo (or the attorney handling the application) knowingly submitted a document that [cringing] falsely [/uncringing] represented that Mr. Lang does exist, then the entire trademark registration is at risk.  That means canceling the registration – or perhaps the registration would be void.  That means no trademark infringement as to the registration.

Stage names are registrable with the USPTO, but the “real” person should – or at least typically does – sign their real name on the consent form.  For example, Mario Lavandeira signed the consent form in the trademark application for his stage name, “Perez Hilton.”

This is a fascinating issue – a real person signs the name of a fictional character loosely based on his own persona in an attempt to register the fictional character’s full name as a trademark.

Ultimately, if the trademark registration is canceled, I think hindsight will show that a simple response to the Examining Attorney’s June 23, 2007 office action indicating that “Brandon Lang is a fictional character” and/or having Brandon Link sign his real name for the “Brandon Lang” pseudonym would have prevented this entire mess.

Wonder what the odds are?

Grabbing my popcorn…