Tim Lince

Eyebrows have been raised over recent trademark filings by businesses linked to prolific domain owner and entertainment entrepreneur Michael Gleissner. World Trademark Review has conducted an extensive investigation into the filings, which reveals an intriguing web of thousands of company names, domains and trademarks related to high-profile brands, generic terms and even IP offices – with the legal work in the US being led by a former USPTO patent examiner.

German-born Gleissner is described on Wikipedia as an “entrepreneur, film producer, director, screenwriter, actor, photographer and musician”. While his official website focuses on his movie experience, he is also known as an early online pioneer in web hosting and a purchaser of big-ticket domains. He has founded companies including Bigfoot Entertainment and Fashion One, and his businesses are spread out across the world.

Interest was piqued in recent weeks when it was revealed that a Gleissner-owned company, CKL Holdings, filed a UDRP against ‘zero.com’, a domain that is owned by Google. The case was terminated, but it threw a spotlight on an apparent increase in UDRP filings by his companies in recent months (including 'apollo.com’, ‘mclip.com’ and 'slized.com'). While this suggests that a more aggressive domain strategy is being employed, recent activity in filing for trademarks and registered business names suggests an even more nuanced – and expensive – exercise is being undertaken. Following a tip-off from IP lawyer John Berryhill of recent unusual USPTO filing activity, World Trademark Review has conducted and compiled further research that suggests a massive operation involving thousands of registered company names and trademarks across the world.

The ongoing USPTO filing spree, with the current count of more than 250 applications and rising daily, appears to be led by Jonathan Grant Morton, a former USPTO patent examiner who is listed on LinkedIn as general counsel and IP attorney at Gleissner’s companies CKL and Fashion One. A number of established brands – including BAIDU and THE HOME DEPOT – are amongst the applications filed by Morton. There are also a wide variety of common names (eg, ALAN, DANIEL, RICHARD, SARAH, WANG), terms related to well-known fictional and real-life individuals (eg, BOND, MADOFF and SHERLOCK) and domains related to cities (eg, HONGKONG.COM, ROME.COM, SINGAPORE.COM, TOKYO.COM) on the trademark application list (a search of WHOIS records suggests Gleisnner does not appear to be the owner of any of the city domain names). While filed by Morton, there are a variety of applicant names. However, while some crop up for the first time (eg, Namibia-based Namib Brand Investments and Latvia-based Grigorius Holdings), many are known to be associated to Gleissner (eg, CKL Holdings, Fashion One, Bigfoot).

A significant proportion of the USPTO applications are based on ‘prior rights’ from marks in other jurisdictions, so we took some of the applicant names used repeatedly in the US filings and searched for trademarks across a variety of other jurisdictions. It revealed hundreds of trademark applications lodged in the last few months – with a significant number already registered.

Worldwide operation

Every one of the terms filed at the USPTO appear to be also filed in other jurisdictions, with the Benelux, Latvian and UK IPO being the most used venues. For example, the terms BAIDU, TESLA, THE LEARNING CHANNEL and PAN AM have all been registered in the Benelux by entities that appear to be related to Gleissner. Curiously, a Gleissner entity also attempted to register LEHMAN BROTHERS in Latvia but the mark was refused.

One thing to note is that some of the applicant names were used only once, and were directly related to the trademarks being filed (eg, the US trademark for the term YEAH has an applicant listed as ‘Yeah Technologies Inc’, which is based at the same London address as many of Gleissner’s businesses). Further investigation reveals that Michael Gleissner has personally registered over 1,000 company names in the UK since February this year, and is the sole employee at each. The list of companies is, unsurprisingly, vast and varied – with most being generic terms or three-letter combinations followed by, for the most part, ‘International’, ‘Holdings’ or ‘Technologies’. Nearly all of the companies are listed at one single address in the heart of London – 207 Regent Street – which is the same address used on a majority of the filed trademarks. Many of the company name terms were subsequently filed as trademarks (one of note for trademark practitioners is Gleissner’s registered company “EUIPO INTERNATIONAL LIMITED”, which recently filed a trademark in Portugal for the term EUIPO. We have contacted the EU Trademark Office about whether it plans to oppose that particular mark).

The business strategy behind the web

So these ongoing activities appear to be a sophisticated, and presumably expensive and time-consuming, operation. We contacted both Gleissner’s agent and his US IP attorney, Jonathan Grant Morton, hoping to shed some light on the business strategy behind the filings. While Morton initially agreed to answer written questions, he has not since responded to our enquiries.

The first question that naturally jumps to mind is whether this is another version of the “Trademark King”, the individual we reported on last year who spent over $50,000 on brand-related US trademarks that were ultimately rejected. However, Ed Timberlake, an attorney-at-law at Forrest Firm, tells us that the comparison is not necessarily apt: “While the number of filings and the number of applications containing domains might remind us of Trademark King, Gleissner and Morton appear to be employing an altogether more sophisticated approach – especially since their trademark applications in the US are not (for the most part) riddled with familiar company names.”

However, the precise motivation behind this complex web of companies and trademark applications remains a mystery. The most likely theory we have heard from commentators is that the trademarks and business names are related to Gleissner’s lucrative domain portfolio. For example, many of the random three-letter combinations filed as UK company names are also ‘.com’ domain names that Gleissner appears to own (with the registered company name now listed as the registrant in many of the WHOIS records, with the aforementioned 207 Regent Street, London location listed as the registrant address – eg, 'aaz.com', 'ajv.com'). More conclusive evidence for this theory was revealed yesterday by Domain Name Wire, who reports that a lawyer for Bigfoot Entertainment, Singapore-based Marco Notarnicola, described one of his job responsibilities on LinkedIn as 'manipulating trademarks to reverse hijack domain names through UDRP' (a comment he has now removed).

Berryhill agrees that domains are the likely motivation, and has a number of speculative theories about how this portfolio of names could be leveraged. “The filings could be intended to impair the value of existing domains,” he suggests. “For example, a prospective purchaser for ‘rome.com’ might come across the trademark filings, decide that there is risk element involved, and discount the value of the domain name by that perceived risk. That's not an unusual effect with junior trademarks which correspond to senior domain names. A direct effect, aside from deterring other purchasers would be, as many trademark owners already do, to use a junior mark in order to threaten legal action as a cost negotiation strategy. That's the most common tactic present in the last dozen or so UDRP cases I've handled, and pretty much daily in cease-and-desist letters which never make it to an actual dispute.”

Alternatively, he suggests that it could be an effort to “exploit the gaming opportunities provided by the Trademark Clearinghouse (TMCH) and sunrise procedures in new gTLDs”, adding: “We've seen, for example, perfunctory filings in various countries backed up by token ‘evidence of use’ such as cheap imprinted pens and souvenirs, as vehicles to get the first crack at domain registrations. With the TMCH, ICANN built a layer of domain name procedures on top of existing trademark registration systems which are not well designed for the purpose for which they are being used, and so those trademark registration systems are being exploited in a way that ICANN has practically defined.”

However, there is a problem with this theory – namely that  registrations in smaller jurisdictions are entirely adequate for TMCH purposes, so the USPTO marks may not have been needed, with Berryhill observing: “There is no reason to premise US applications on foreign filings to accomplish the normal sunrise gaming that has made words like ‘sex’ among the most heavily-trademarked words in Belgium. I'm sure sex is as popular in Belgium as anywhere else, but you only need to lose your virginity once to get into the Trademark Clearinghouse.”

Alternatively, he wonders whether it is a way to lay the groundwork for future TLD application rounds at ICANN. Again, though, there is a hole in this theory - namely that “the dispute mechanism specifically discounted claimed ‘rights’ acquired primarily for the purpose of advancing a TLD application”.

Of course, there is nothing wrong with establishing a network of companies and making a significant number of trademark applications. However, the scale of activity makes this an intriguing one for trademark observers to watch – and until Gleissner himself speaks out (and we will update this article if he gets in touch), the strategy behind this filing spree will remain shrouded in mystery. In the meantime, brand owners may wish to consider looking at our easily-searchable collation of Gleisnner’s recent filing activity, and continue to monitor any new filings in case there are instances where oppositions are merited. 

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