by Structured Settlement Watchdog®
An audacious attempt has been made to trademark industry slang.
What is a Trademark?
What is a trademark? According to the U.S. Patent and Trademark Office (USPTO), a trademark is a "word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of goods of one party from those of others.". There are two key elements in that definition: 1) Trademarks protect commercial products and services. Trademarking "Let's roll" won't stop you from using it in everyday conversation. 2) Trademarks identify the source of goods and services. Therefore, either your trademark must be inherently distinctive, identifying you as the source of a product, or your trademark must have acquired distinctiveness—you must prove that the public identifies your trademark with your particular good or service and with you as the source of that good or service.
Failed attempts to trademark common terms by structured settlement companies
A 2009 EPS Settlements Group (now Arcadia Settlements Group) attempt to trademark "The Structured Settlement Company" failed , 20 years after its predecessor The Structured Settlement Company (TSSC) failed. Download The Structured Settlements Company Trademark Electronic Search.
On April 6, 2009 EPS filed a separate action to try to register "EPS Settlements Group The Structured Settlements Company" (Serial 77713386).
While the USPTO stated on June 30, 2009 that its search results found no conflicting marks, the office action in application 77713386 raised similar concerns as the failed application, namely that the words "Settlements Group The Structured Settlements Company" are descriptive of its services (i.e. a group or company that provides structured settlements". The USPTO cited numerous examples which include the words EPS was trying to trade mark. Many of those stories involved competitors of EPS, including Ringler Associates and The James Street Group.
At the time I wrote that author continues to opine that the trade marking of "the structured settlements company" in any capacity would put EPS competitors at a disadvantage. As it is mediators often refer to settlement consultants during introductions as "...from the structured settlement company", whether or not they are from EPS.
What is Happening That Should Now Have Everyone in the Structured Settlement Industry Concerned
Many industry participants received a press release about IFS launch of Structures Inc. In May 2017, that company in the structured settlement industry filed an application 87450298, in an attempt to trademark the word "structures" as a mark. That's not just a logo but the actual word "structures". The application states a first use date of February 2017. If the trademark issues, any competitors in the structured settlement industry could be subject of legal action by Structures, inc., an affiliate of Integrated Financial Settlements (IFS), the holding company that owns Arcadia Settlements, Structured Financial Associates (SFA) Millennium Settlements and JMW Settlements and Mass Tort Settlement Solutions. for infringing on the use of the word "structures". Not to mention the free publicity that the company gets from the substantial existing published use of the term by its competitors (see below).
IFS claims that it has a 41% market share of industry production, according to its September 28, 2017 press release.
FACT: " Structures" is well established structured settlement industry and stakeholder slang
1 The word "structures" is common slang for structured settlements , structured settlement annuities, or structured annuities. It is descriptive in nature used by structured settlement brokers, settlement planners. planners, claims adjusters both domestically and overseas, plaintiff and defense lawyers and judges.
2 This slang word "structures" has been in the vernacular of these stakeholders for more than 25 years.
How about a structure?
What are the rates on structures these days?
We use _____for our structures
He's the structures guy
I'm the structures guy
from the structures company'
structures are awesome
structures are a good source of stable income
we've used structures and... (in connection with the product not the new company)
Several insurance companies use structures in their email signature (e.g. email@example.com, firstname.lastname@example.org). We have used email email@example.com
It's not hard to see the potential confusion, as the USPTO did in a recent office action.
3. There seems nothing distinctive about the word "structures" by the IFS subsidiary, that has developed a secondary meaning that separates it from structured settlements. The use of "structures" is unoriginal. Indeed IFS company Millennium Settlements refers to non qualified structures and non qualified structured settlements synonymously in its meta tags and titles on one of its web pages that comes up in Google search results. Here is a broad industry sampling. that underscores the point
Structured Settlements 4Real blog 1,420 instances of the word "structures" inextricably signifying structured settlements in each case. retrieved 9/29/2017
4structures.com. 125 instances of the word "structures" retrieved 9/29/2017
Chronovo 72 instances of the word "structures". retrieved 9/29/2017
Ringler Associates 96 instances of the word "structures", retrieved 9/29/2017
Settlement Alliance 210 Instances of the word "structures", retrieved 9/29/2017
Atlas Settlement (Byrd Settlements) "Structures, structured settlements NC.." Title tag Retrieved 9/29/2017
Even SEO companies for settlement purchasers use the term " Structures Settlement Protection Acts" Structuredsettlements.com 9/29/2017 meta tag description
Atlas Settlements " Structures for Attorneys" Used in title tag and slug for URL says "structures-attorneys". 73 instances of "structures" on its websites
Robert W. Wood, noted tax attorney in " What is a Structured Settlement?" published in Forbes in 2010 refers to structures numerous times, to wit: "they buy up structures at a discount", "taxable structures", "non qualified settlement ruling spurs damage structures", " if you are(were a successful plaintiff in a lawsuit, your contact with structures may be more personal" published Forves10/26/2010 retrieved 9/29/2017
Structured Settlements as Structures of Rights by Henry Smith, published 1-1-2002 Yale Law School Legal Scholarship Repository retrieved 9/29/2017
Delta Settlements, 70 instances of the word 'structures" retried 9/29/2017
NFP Structured Settlements, in conjunction with defining what is a structured settlement states "often referred to as "structures", among 51 instances of "structures" retrieved 9/29/2017
Synergy Settlements 240 instances of "structures", retrieved 9/29/2017
Creative Capital 17 instances of "structures", retrieved 9/29/2017
Forge Consulting, 16 instances of 'structures", retrieved 9/29/2017
USPTO Denies Registration of STRUCTURES as a Trademark for Structures, Inc.
A. Similarity of Marks
In its August 17, 2017 office action, the USPTO refused to register "structures" "because of the likelihood of confusion with marks in U.S. Registration Nos. 4640532 and 4640531. The two marks the USP&O cited were word marks registered to 4structures.com LLC, namely "4structures" and "4structures.com".
The USPTO opined that the dominant feature among the respective marks is the term STRUCTURES and that although the number "4" is not present in the applied for registration, this factor does not obviate the likelihood of confusion in that the number "4" in the mark modifies the dominant shared term STRUCTURES among the respective marks meaning "for structures".
The USPTO further opined that "marks may be similar in sound, appearance and meaning where similar terms or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression...the respective marks here create the same overall commercial impression of a STRUCTURES proprietary brand rendering confusion likely.
B. Simlarity of the Services
The USPTO opined that "the services of the parties need not be identical or even competitive to find a likelihood of confusion". It further opined that " the respective services need only be related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the services emanate from the same source"
"Absent restrictions in an application, the identified services are "presumed to travel in the same channels of trade in the same class of purchasers"
C. Priority Pending Filing
A Danish company has submitted a filing of the similar sounding Struqtures with a priority date in January 2017 that precedes the STRUCTURES filing.
The Structures Inc. Response to the USPTO Office Action Gave Me a Sardonic Chuckle
The attorney for The IFS subsidiary states that "the fact that there is no spacing between the number 4 and the remaining portion of the Cited Marks. The size, boldness and leading position of the number " 4" calls consumer's attention to the number "4" when viewing the cited mark in the market place. The fact that there is no spacing between the number "4" and the remaining portion of the Cited Marks creates a unique commercial impression and alleviates the impression that the number "4" represents the word "for"
Perhaps the attorney overlooked the fact that prior to the filing date of the filed application by his client, that 4structures.com LLC is the registrant of the domains
forstructures.com (identifies with company and telephone number)
for-structures.com , all of which redirect to 4structures.com
weknowstructures.com and weknowstructures with the extensions .net, .org, .me and .info
The "4" is obviously meant to denote "for". There is a wealth of contemporaneous evidence that any normal person would be able to discern that was the context of its usage. Many people who text use the " 4" to denote the word "for". [ see NetLingo.com] . Also see Smart Words section 50 Popular Texting Abbreviation and Internet Acronyms particular on Usage and Meaning
"Not all of these short-hands can be assumed to be understood by the majorities of Internet or E-Mail users. However, there are some exceptions, which are fairly safe to use:
2 to / too
The reason is that these abbreviations are based on the pronunciation of their corresponding letter / digit."
I'm sure I was under 8 years old when I learned this basic "encryption" YYUR, YYUB, ICUR YY4me, from my late grandmother, who was born in 1903. [ Two wise you are Two wise you be. I see you are too wise for me.]
It is common knowledge that our blog Structured Settlements 4Real® also includes the number 4. Nobody could ever mistake that for not being representative of the word "for". 4structures owns Structured Settlements 4Real.com and Structuredsettlementsforreal.com. Upon information and belief the applicant also knows that our blog Structured Settlements 4Real
There is also an attempt to be cute on the identification of services which clearly overlap with ours [ structured tax deferred periodic payments for legal claim settlements]
Ours on the Cited Registered Marks " Financial services, namely, providing planning and financial analysis in connection with the settlement of legal claims, providing insurance and structured settlement consultation and planning services, insurance brokerage services, insurance agencies, insurance agencies in the field of structured settlements, insurance brokerage, insurance brokerage in the field of structured settlements, insurance claims administration, insurance underwriting in the field of structured settlements, providing on-line news, information and services in the field of insurance and structured settlements"
Applicant on amended description "Financial advisory and consulting services in the field of creating structured tax-deferred periodic payments for legal settlements and other similar transactions and the financial administration of same".
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. Keep an eye on this one.