Law Firm Sued for Bad Trademark Advice

Submitted by patentadmin on Wed, 10/19/2016 - 21:52

Taking on a trademark involves more than just filing a form with the U.S. Patent and Trademark Office and hoping to receive back a favorable response. Most companies buy a website domain to match their hoped-for trademark, and they mark up all of their products and services with the hoped-for trademark to start building the brand. If the trademark applicant does not receive a registered trademark for the brand it wanted to use, or the name turns out to be infringing someone else’s trademark, that company just spent a ton of time, money, resources, talent and buzz to promote a brand it now cannot use!

And that is exactly what happened to Reserve Media. The start-up restaurant reservations and services company was advised by its law firm, Barnes & Thornburg, that it could use the “Reserve” trademark without infringing anyone else’s trademark. So the company jumped in with both feet, acquired the website domain, marked up its services with the “Reserve” brand, and conscientiously marked it with a “™” to protect their hoped-for brand.

Reserve Media just filed a $1 million lawsuit against the law firm claiming that it got bad advice when it learned that it cannot use “Reserve” without infringing existing trademarks, and it spent a ton of time, money, talent, resources and buzz promoting the “Reserve” brand.

Here is what we find really interesting. This May (just six months ago), banking giant JPMorgan Chase filed for a trademark for “Reserve” for “Credit Card Services, Namely, Credit Card Transaction Processing Services and Credit Card Payment Processing Services.” This is a clearly a different service than restaurant reservations, and the same trademark can be applied to different products. Will JPMorgan Chase get their trademark? Check back in this space.

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