Litigation

EPS Attempts To Trademark "The Structured Settlements Company"

By John Darer

EPS Settlements Group has opportunistically attempted to register the stand alone words "The Structured Settlements Company" as a service mark. On February 9, 2009 the United States Patent and Trademark Office issued a refusal based on Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. whereby registration is refused because the applied-for mark merely immediately describes the nature of applicant?s goods and/or services.

In its application number 77609719 to the USPTO,  EPS cited a prior mark under registration 1519185, which embodied the initials "TSSC", NOT the descriptive "the structured settlements company". That mark was registered January 3, 1989

Download Trademark Registration 1519185 "TSSC"

Download USPTO 2-9-2009 office action on attempt by EPS Settlements Group to register the stand alone "The Structured Settlements Company"

For the very reason that the USPTO issued its refusal on February 9, 2009, this author opines that the EPS Settlements Group attempt to register the above words a trademark should be opposed by other stakeholders in the structured settlement industry if their application makes it past the examination stage at the USPTO and is published for opposition.

Once a trademark is accepted by the USPTO it must be published for opposition to give potentially affected parties a last chance opportunity to object and provide input to the USPTO before an allowance is given. Once a mark has been published for opposition the time to object is extremely short.

If you are a stakeholder in the structured settlement industry do you want to have a lawyer or mediator say (about you) " this is Mary Jones, she is with the structured settlements company", when you are with a company other than EPS Settlements Group?   Should EPS Settlements Group own the preposition "the" in connection with those descriptive words and be able to legally enforce it against you when in competition?

I don't care who you are...friend or foe..   such registration is clearly not in the best interest of the industry. It would likely lead to market confusion in addition to the potential for litigation.  I would like to underscore that this is nothing personal against EPS Settlements Group and its many fine consultants and leaders who I consider friends.

EPS Settlements Group has until August 9, 2009 to respond to the office action.

Structured settlement industry stakeholders are encouraged to independently monitor developments concerning trademark application 77609719 at www.uspto.gov and to decide their own course of action.

Also of note is that on April 14, 2009, EPS submitted an additional trademark application 7713386, which includes the words The Structured Settlements Company, this time in conjunction with the name of the company. That iteration can be found on the EPS website. The application states that the term was first used in commerce April 6, 2009.

Full post as published by Structured Settlements 4Real on May 13, 2009 (boomark / email).