By Fischer and Randazza
Another day, another cautionary tale about how staying at a Holiday Inn Express doesn’t qualify you to practice law.
Enter Jamil Ezzo, an enterprising Internet maven, who runs the website at www.LocatePlasticSurgeon.com. Mr. Ezzo decided that he should file for a federal trademark registration on his incredibly creative and original business name, “Locate Plastic Surgeon,” and in an effort to give his fledgling new business venture a leg up over the wasteful spenders that were his cutthroat competition, he figured that he should forego hiring a lawyer to do it for him. Great plan, Jamil, except that any IP attorney who’s worth his salt would have told you that your proposed mark is pretty much worthless and you shouldn’t waste your time or money trying to protect it.
Well, who needs an expensive, fancy lawyer to tell you, when the examining attorney at the United States Patent and Trademark Office will do it for the price of filing? Except that it helps to know what you are reading when the office action comes back:
Judging from the applicant’s specimen of use, the services appear to be in the nature of offering a website that allows users to identify the location of – i.e., locate – surgeons specializing in plastic surgery. Thus, the mark is merely descriptive as applied to the services because it describes a function of the applicant’s website.
Translation: Your mark is lame, and it will be really difficult to justify giving you the right to exclude everyone in your field from using the same words in association with their business.
[A]lthough the trademark examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal(s) under Section 2(e)(1) of the Trademark Act by amending the application to seek registration on the Supplemental Register.
Translation: We’ll take your money to put your mark in the cheap seats, but you’re gonna have to prove that the relevant marketplace identifies your service with the proposed mark before you can hope to win a claim in federal court.
Mr. Ezzo took the “advice” of his “attorney” and registered his ultra-awesome mark on the “Supplemental Register” – whatever that is. Now he thinks he can stop anyone from using the phrase “Locate Plastic Surgeon” on the internet, and he has filed a complaint in the Middle District of Florida seeking to do just that. His targets: Google, AOL, PlasticSurgery.org (website for the American Society of Plastic Surgeons), PlasticSurgery.com, FindYourPlasticSurgeon.com, and FindCosmeticSurgeons.com – to name a few.
Keeping with his normal business practice, Mr. Ezzo has decided that he can handle this bit of litigation on his own. He drafted the complaint himself, if you couldn’t tell. The first eleven pages comprise large, copied-and-pasted portions of the United States Code – much of which have nothing to do with Ezzo’s “alleged” cause of action. His “claims” include fraud (with no indication of the supporting facts), misrepresentation (without any mention of what was represented to him), rescission (wait, that’s not a cause of action… it’s a remedy), and injunction (ditto). What does he want? Only $90M, representing the lost subscription fees from 5,000 subscribers who would have found Mr. Ezzo’s site, but for the alleged fraud, misrepresentation, rescission, and injunction of the defendants. Of course, that number has been tripled, because this is absolutely an “exceptional case.”
The only thing “exceptional” about this case is how exceptionally foolish it was to file. Normally, in trademark cases, the parties bear their own fees. However, in “exceptional cases,” the prevailing party may also get an award of attorneys’ fees. If I’m the oddsmaker on this case, even one of my law students could likely get this thing dismissed and get the defendants an attorneys’ fees award against Mr. Ezzo. I’d imagine that Google and AOL are going to have no difficulty bringing a complete and total smackdown.
Sadly, one consult with a qualified trademark attorney (which might have been free, if he found the right one) could have saved Mr. Ezzo lots of time, energy, money, aggravation, and humiliation. He would have learned that his registration was not worth pursuing, at the least. At best, he would have avoided filing this laughable lawsuit – which will probably end with him on the hook for some attorneys’ fees.