Trademark Attorney Morris Turek

Morris E. Turek

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U.S. Securities and Exchange Commission: “It’s more fun to file trademark oppositions than to catch crooks, so we’ll do that instead.”

As I was conducting my weekly ritual of browsing through newly-filed oppositions on the Trademark Trial and Appeal Board’s website, I came across one that every person who has ever purchased or traded a stock, mutual fund, or other security is helping to finance.  On March 28, 2010, the United States Securities and Exchange Commission (an agency of the federal government funded by the transfer and registration fees from stock trades), filed an opposition against two trademark applications owned by a Nevada company by the name of The Sec Institute, Inc.  These applications are for the marks THE SEC INSTITUTE (Serial No. 77654387) and THE SEC INSTITUTE with a logo that kind of looks like a house (Serial No. 77651451).  According to the applications, both of these marks have been used by The SEC Institute since 1984 in connection with educational workshops and seminars meant to assist businesses and organizations comply with the filing and reporting requirements of the Securities and Exchange Commission (better known as the “SEC”).  The SEC’s opposition to these applications is based on a likelihood of confusion with its prior use of the acronym SEC in association with a wide variety of services including regulating the financial industry and securities exchanges, monitoring and enforcing compliance with regulations, educational services, providing financial information, promoting investor protection, etc.  The SEC also alleges that The SEC Institute’s marks falsely suggest a connection between itself and the SEC.

While this opposition perhaps doesn’t rise to the level of being ridiculous, I do find it somewhat curious considering that a cursory search of the Trademark Office’s records revealed two other existing registrations for marks that incorporate the acronym SEC where the acronym is clearly referring to the Securities and Exchange Commission.  The first is a February 2009 registration for SEC TEA PARTY (Reg. No. 3579868) for “blogs featuring commentary on Securities and Exchange Commission and other legal matters,” and the other is for SEC FILINGS NAVIGATOR (Reg. No. 3729014) for what amount to providing online information and guidance to people concerning what information must be disclosed to the SEC.  I also note that the Securities and Exchange Commission has never attempted to register its SEC mark for any products or services whatsoever in the 75 years the agency has been in existence.  I guess it has just been too busy investigating and catching crooks like Bernie Madoff, R. Allen Stanford, Lehman Brothers, and Enron before their illegal schemes could cause catastrophic harm to millions of Americans.

I guess there is the small possibility that some people will be confused into believing that the SEC approves, sponsors, or endorses the services rendered by The SEC Institute.  As the plaintiff, the SEC is going to have to prove its case, perhaps with survey evidence and other expert testimony.  But as far as the SEC’s allegation of a false suggestion of a connection between the two entities, I’m sure the last thing The SEC Institute wants is people to assume there is any kind of association between itself and the SEC, especially considering the SEC’s incredible failures over the past decade to properly carry out its duties and the immense amount of negative media attention surrounding such failures.  In fact, The SEC Institute’s website has a small disclaimer on the bottom of each page which states that “The SEC Institute is not affiliated with the U.S. Securities and Exchange Commission (SEC).”  I swear, if I was The SEC Institute I would demand that the Securities and Exchange Commission immediately put a disclaimer on its website indicating that it is not affiliated with me!

Apart from whether the SEC has a decent case against The SEC Institute, I think it’s a shame that the SEC is spending a portion of its budget hiring one of the world’s largest and most prestigious intellectual property firms (Finnegan in Washington DC) to go after a company that is actually helping businesses and organizations comply with the SEC’s own rules and regulations (which I’m sure are onerous, burdensome, and complex).  The SEC Institute is certainly not harming the (already poor) reputation and (almost nonexistent) goodwill of the SEC name, and I very much doubt there has been any actual consumer confusion stemming from its use of THE SEC INSTITUTE over the past 25 years.  Although reasonable minds can certainly differ, I believe the SEC should be more concerned with spending its finite budget on protecting hard-working American investors from fraud rather than on an opposition that, in the best case scenario, would only prevent The SEC Institute from registering its trademarks and would do nothing to actually stop The SEC Institute from continuing to use its trademarks to advertise and sell its services.  Makes you wonder, no?

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