IamA Keith Alexander Ashe, CEO & Founder of Spendology. I am representing my company on my own in a trademark dispute against one of the largest banks in the US. AMA!

What was the reasoning for the USPTO cancelling your trademark?

My company submitted a trademark application on October 25, 2011. PNC Bank submitted an application on June 12, 2012 for the same trademark. The next day they sent me a cease and desist letter. In October 2012, PNC Bank filed a Notice of Opposition with the USPTO Trademark Trial and Appeals Board. An Opposition proceeding is like a lawsuit in administrative court. It typically costs $250,000 to defend. My lawyer at the time couldn't do it. I didn't have a quarter-mill handy so I defended myself. The USPTO Trademark Trial and Appeals Board ruled in favor of PNC even though I used the trademark first.

This Tweet from PNC is dated January 20, 2011. It references Spendology and labels it as a Service Mark of PNC. That seems to predate your trademark application? It seems they've been using that term for quite some time.

Yes, my company started using the trademark on July 21, 2010. My company initiated activities (advertising, marketing, events, surveys, etc.) in May 2010 that demonstrate use analagous to trademark use. PNC claims to have started using the same mark in August 2010 based on their publicly available trademark application. According to the law, analagous use trups use in commerce. Source: Nixon Peabody paper on Trademark Priority

Looking into this more, it appears that your sole use of the the term "spendology" on July 21, 2010 was to mention it on the blog post you provided. According to this article that is why you lost the case.

the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board held that the applicant’s creation of a social media presence was not enough in and of itself to create trademark rights in determining the priority of a contested mark.

[...]

The applicant claimed constructive first use as of Oct. 25, 2011, the filing date of the applicant’s federal service mark application. The opposer’s evidence established a first use date of Aug. 26, 2010. In response, the applicant attempted to prove an earlier first use date based on alleged "use analogous to trademark use." To support this argument, the applicant offered as evidence its having joined Twitter and its tweets about its mark, its creation of a Facebook page, and its blogging about its mark.

So basically, you said you had rights to it as of October 25, 2011. They showed evidence they have been using it since August 26, 2010. Then you brought out a blog post where you mentioned Spendology on July 21, 2010 and they said, "sorry blog post no good".

Is this the case in essence?

Excellent point. There were also other uses that included advertising, marketing, events, and surveys. The legal precedence set by a Federal Appellate court is that all of the actions of the company need to be considered and not single actions or events in isolation, e.g., put the "pieces of the puzzle together". The puzzle language was used by one of the judges that set the legal precedence which made analogous use > use in commerce.

According to the TTAB, you offered "tweets about [your] mark", the "creation of a Facebook page", and "blogging about [your] mark." If you had additional evidence concerning this "advertising, marketing, events, and surveys" that you keep mentioning, why would you not present that evidence to the TTAB?

Honestly, without research, I can't say for sure whether your arguments have merit. But if you didn't present adequate evidence during your case, then it doesn't really matter--the TTAB can only rule on what they have before them, and social media posts clearly aren't cutting it to establish constructive use.

The additional evidence was presented confidentially to the TTAB. The TTAB took each piece of evidence and evaluated it in isolation rather than combining the "pieces of the puzzle".

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Oops! I left an additional asterisk by accident. Thanks!

I don't really understand the means by which this was allowed to happen to your invention/company.

This completely goes against the logic that created the USPTO and the logic behind the way they are supposed to function.

You are correct. The spirit and the letter of the law stipulate that the first company that demonstrates only an "intent to use" a trademark for business gets priority rights. This is an example of regulatory capture. We all work for Corporate America now. Yet, I am not waiving the white flag just yet. A similar case is headed to the Supreme Court this December. Moreover, I can also sue PNC in Federal court. It's no easy feat but it's the right thing to do.

Not trying to be too alarmed, but this looks like they have somebody sitting in there informing people on the outside regarding applications that could be interesting to them and if necessary keep them pending until their contact has filed one of their own, discarding the first and hoping the first applicant doesn't have the means to go to court.
Are there more cases like yours that would support such a hypothesis?

I do believe that the game is rigged. I cannot state nor support an allegation that this is what specifically happened. I can say that a group of 5 year olds could have reached a more appropriate ruling. Nonetheless, a big case is headed to the Supreme Court on this December 2, 2014 on this very issue (weight of USPTO Trademark Trial and Appeals Board decisions on Federal District and Appellate court cases). My company will eventually have its day in court and we will see what a jury has to say about all this.

Do you think maybe you shouldn't be representing yourself in these cases? Might be why you lost.

Great question. The advice that I received from my lawyer at the time was to just give it up. The expected cost to defend an administrative lawsuit by a good law firm is $250,000. The cost is $80,000 for a small law firm. My company really didn't have the cash flow to fight Goliath with this choice of weapons. However, we could fight like David.

Didn't mean to sound negative, just one more question I agree with your plight, but do think it is time to let it go and start your next endeavor? You are obviously a smart guy why waste your time on this, why not focus on something new? Good luck!

Excellent point. Spendology has expanded into new areas throughout the years. I held on to my day job while figuring out which product-customers matches would work best. Right now, Spendology's Finio Business segment has picked up a lot of business. We are providing consulting and custom software development to businesses and organizations.

This is very different from the online financial calculators we started out with. Yet, the name Spendology is sort of lie a child that I gave birth to years ago. I am fighting because I believe that I am right. I also want to encourage future entrepreneurs to fight and not just lay down when Big Corporate comes calling.

Seems like this case comes down to your and PNC's 'constructive first use date.' I do think that this is an important consideration in the validity of any trademark to prevent someone from swooping in and stealing a brand/business/customers from another rightful organization. What evidence do you have that your constructive first use date was prior to PNC's?

Great question. There are different tiers to assigning constructive use dates. This Nixon Peabody paper on Priority shows the hierarchy. Analogous Use > Use in Commerce.

Are you not just changing your name because you know it's better business to make the most of the lawsuit?

I'm not changing the name on principle. I conducted due diligence, performed a search and learned that no business was using it for my firm's class of goods when I started. I applied for trademark protection first. PNC Bank can feel free to stop using my company's name any time.

Have you sold the story to Hollywood yet?

I think Jason Bateman could play you, and Will Arnette as the evil incompetent PNC guy.

That's not fair to Will Arnette!!

Do you think it's a good idea to post all this about your case before your trial begins?

The trial in front of the USPTO Trademark Trial and Appeals Board is over. Only publicly available information is being shared.

I've been through something similar. What resources are you using for research? Do you still seek legal counsel, even if you have no attorney on retainer to represent you?

First of al, sorry to hear that. I don't wish this on anyone. I have still sought out legal counsel. I get every response from them not seeing merit in the case to not being serious about defending my firm's rights. At some point, you have to conduct research, get as much legal feedback as possible, and decide what is best for you and your company.

Have you heard the proverb "A man who is his own lawyer has a fool for a client"?

“If you are neutral in situations of injustice, you have chosen the side of the oppressor. If an elephant has its foot on the tail of a mouse, and you say that you are neutral, the mouse will not appreciate your neutrality.” ― Desmond Tutu

Can you summarize Spendology into one word?

A couple words: using psychology to change spending habits

Are you worried that PNC will use its massive power and influence to bribe officials or otherwise make the case disappear? I'm not saying that PNC is a dishonest company, but I also don't trust companies that large not to have their hands in the pockets of influential people.

When I first got the cease & desist letter I was a honestly frightened that this would be the result. However, I am encouraged by the story of David and Goliath. We have real examples of small, under-resources forces taking down giants from Ghandi to Erin Brockovich. I eventually decided that I had to fight to encourage other entrepreneurs and small business women not to take this sort of thing laying down.

I should also mention that the ruling by the USPTO TTAB seems like this sort of result. Trademarks have common law rights in addition to rights given from Federal registration. There have been many cases that dealt with who had priority rights over a trademark. The analogous use doctrine stipulates that the bona fide intent to use a trademark in commerce trumps use in commerce. Thus, the upcoming Supreme Court case will have an impact on the matter with PNC.

I don't have a question, but I think it's good that you're standing up to a bullying corporation despite the odds.

Um... What's your favourite ice cream?

Cookies and cream with real Oreo cookies.

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I want to encourage other folks on Main Street to fight for their rights. They are only "your rights" if you actively assert them. Moreover, I want folks in the Ivory Tower to think twice before messing with the little guy.

Wow, I rarely see other Keith's, and never seen one I shared a middle name with!

My understanding is a later applicant can cancel out an existing trademark application if they were using it first. What was their grounds to deny you the mark?

I wish you all the best with your case!

Thanks Keith Alexander! Question for you: Do you go by Keith or Alexander?

Well, there is a hierarchy. Analagous Use trumps use in commerce. This paper on Trademark Priority from Nixon Peadbody details the case law I used in a Motion for Summary Judgement.

I don't have mutch to say, only; keep your chin up! Because, you were there 8 months earlier. ( there isn't muth that can hppen after this fact right?)

Thank you so much! This is where it gets complicated. Applying first gives you priority. Using it first trumps applying first. Then there is "use in commerce". Yet, analogous use or intent to use trumps use in commerce.

I am a pnc bankee, should I reconsider where I'm putting my money?

I can't tell you what to do with your money. That's a personal decision.

When brainstorming your company name, did you have any concerns that people might confuse you with the Church of Scientology?

Nope.

You are hosting a get together and all the food had spilled all over onto the floor. Your guests arrive in 30 minutes. What do you do?

Call Dominoes. There's an app for that.

Dude I am so sorry I misread spendology as Scientology forgive me?

No worries.

What motivated you to fight and how much time and preparation does it take for you to represent your company?

My approach to any problem is akin to moving a mountain. You can do it one rock at a time. I break down every project into bite-sized tasks and then proceed with deadlines in mind. I also start from a point of complete ignorance and educated myself like a stranger in a foreign land. I have thought about quitting several times. Watching the filk 12 Years a Slave changed that. Solomon Northrup sued the people that kidnapped him while slavery was still illegal. He did so on principle. What's my excuse not to fight for my rights?

How about making your story public? Get the press to write about it. Good PR in these cases is just as important as a good legal defense.

Yes! My background is in engineering. I've started to learn more about getting PR. I have formed relationships with reporters and journalists at places lie CNN, CNN Money, CNBC, Washington Post, etc. I was told by each of those outlets that they weren't interested in this story. One journalist even told me that this story was too complicated for their audience. Sigh.

What was the most challenging obstacle you experienced in founding a company?

Believing that I had the skills or could develop the skills to create products and services that make people's lives better. For every "yes" I hear, I've heard hundreds of "no's".

Opinion on the Establishment ?

There is no doubt who runs the show these days. We have full regulatory capture. We all work for Corporate America now. Unless, we vote like there is no tomorrow.

What is your favorite beverage?

Green Tea from Honest Tea. My company is based in Bethesda, MD - right outside of Washington, DC. Fun fact: Honest Tea is also based in Bethesda.

Do you like peanut butter?

Love it! Who doesn't?

Have you ever had Alexander Keiths beer? You should. Also good luck.

Yes, funny story. My cousin found this beer and brought it to a family BBQ.

Any advice for a 17 year old?

Invest time in figuring out what you LOVE to do. Then, do research (Bureau of Labor Statistics, Google, adults,) to find out the careers that align with your passion. Next, find out if you can do what you love or something close to it at a minimal cost, e.g., trade school vs. 4-year college, state school vs. private school, etc. Start saving early. Make it a habit.

Is there anything proprietary about the Z hook or is expected to just generate cash for a short period of time. Just want to understand the idea and business behind it. It absolutely an improvement a traditional hook. Does it fit hand towels?

I made some connections at a hotel company. I started talks with them to start using the Z Hook to increase satisfaction in towel reuse programs and reduce costs. I'm also in talks with a company that makes bath fixtures. These evaluation processes take time but I am hoping for the best.

How awsome is your job compaired to everyone else?

I wouldn't call it awesome. I would not wish the perils of entrepreneurship on my worst enemy. I held on to a day job while starting up Spendology. It did make growth and traction very slow. However, I am finally starting to see some big contracts for strategy consulting & custom software development that will enable me to transition to working on Spendology full time. The hard work will certainly be worth it but there were many sacrifices along the way.

Ever thought of investing in Cryptocurrency? Such as Dogecoin or Bitcoin?

I really love to write about cryptocurrrencies. I've written a few popular posts about bitcoin. Some of the posts get negative comments because it may seem like I am speaking ills of the cryptos. However, I think bitcoin can become a viable alternative currency if specific changes are made to increase trust.

Do you play videogames? If "yes", which ones?

Yes! Call of Duty, God of War, Madden, NBA, NCAA Football/BBall are my favorites. For some reason, I like to play Call of Duty Zombie version to break up my coding sessions. It keeps me productive.

I must ask! Is it true that money is literally printed by the federal reserve out of thin air? Then loaned to the government plus interest, paid for by the tax payers? How do we change banking to be for the people and not for the wealthy elite?

This is actually a tough question that goes back to our first Secretary of the Treasury Alexander Hamilton. Money is a store of value and a medium of exchange. It used to be backed by gold. Now, it is fiat or a promise to pay. In a way, you could say that it was printed out of thin air. However, there is a money supply and money demand. Inflation only occurs when money supply far outweighs the demand. It also depends on a ton of other complex factors.

There is a benefit to having debt for countries and companies - it increases ROI and growth. However, Government tax and investment policy can intervene in rapidly growing economic inequality.

The top marginal tax rate was 90% after World War II. Yet, we had a thriving working, middle and upper class. Also, I LOVE economics which is one reason that I wanted to start Spendology and build financial calculators.

Yet a lot of our beloved corperations rely on the sweat shops in China to supply them with cheap components used to provide us with their services. Fashioned together by the adrenilin fueled sweat blood and tears of 10 year old sick and starving children. And every year inflation increases more than minimum wage does, as does the gap between the rich and poor. So my question is...does printing money out of 'thin air' as we do now ACTUALLY help a country in debt prosper? THE PEOPLE not the rich who control us? Is this the right way for humanity to usher in a age of peace and prosperity? Specifically when my stocks in predictor drones and questionable vaccines are in potential limbo?

No, we shouldn't print money for wars and corporate tax breaks. Economic productivity is made up of consumer spending, corporate investment, and government spending. Higher marginal tax rates are an incentive for corporations to invest rather than cut costs and reduce taxes. We do need to invest in infrastructure, education, healthcare, and raise the minimum wage. These investments would actually spur economic growth.