[Update: 4/5/2021. Incorporated the text of my letter into the post for your viewing pleasure. Also made a few tweaks here and there.]
Love rabbit trails. Long story short, today I decided to finish a letter I drafted months ago.
In it, I explain why I believe the eight varieties of LIFEGUARD / LIFE GUARD trademarks should all be canceled. I’ll send the link today to an attorney who might actually be able to do something. His client has been harassed by the Lifeguard Licensing Corp. for having the audacity to think that lifeguards should be able to buy their stuff from more than one company (or those who pay the ridiculous licensing fees). Most of the “infringers” they go after cave immediately, but they’ve finally picked on someone willing and able to fight! Go team!
Incidentally, Ann Arbor T-shirt Company recently tried getting their own legitimate trademark for LIFEGUARDOUTFITTERS, but sadly the USPTO sent a non-final refusal of registration based on the likelihood of confusion with the Lifeguard Licensing Corp.’s monopoly. Gag.
But, don’t be too hard on the USPTO. As Joe told me before, their hands are tied by case law. Case law, in the case of LIFEGUARD, favors the big brand even when a homeschooling mom can point out how they’re not playing fair.
Bottom line, the various companies (it may all be the same company with different names over the years) who own/have owned the trademarks for LIFEGUARD and LIFE GUARD have monopolized all commerce related to products used by lifeguards since 1938.
1938! Legalized extortion via licensing for over eighty years. It was registered in what can only be called a historic case of myopia.
View my letter here. (In a fit of caution I redacted the attorney and client names from the letter. I don’t even know if the intended recipient will ever read this, so it seemed prudent to do so.) My letter follows below.
Many thanks to Seth Godin for inspiring me to try to make a ruckus. I hope it does somebody good.
December 7, 2019
From: Morgan Reece, The Trademark Canary TheTrademarkCanary.com
TO: Thomas P. Heed, Esq.
RE: Lifeguard Licensing Corp. V. Jerry Kozak, Ann Arbor T-Shirt Co.
My Proposed Evidence of LLC’s violation of Sherman Antitrust Act
Dear Mr. Heed,
Below is a defense/basis for summary judgment based on Lifeguard Licensing Corp.’s violation of the Sherman Antitrust Act. It appears you have not yet tried this angle (but I don’t know how to access all the documents related to current legal proceedings.)
I’m a former legal secretary who in 2018 was heavily involved in fighting overreaching trademarks in the print on demand industry. LIFEGUARD is, in my opinion, the flagship of trademark trolls.
Here’s what I’ve read about your case:
1) the Judge’s decision on your motion for summary judgment:
2) the decision to allow one of the defendants to be removed:
https://law.justia.com/cases/federal/district-courts/new-york/nysdce/ 1:2015cv08459/449218/229/ (Justia’s link is broken and I cannot find this decision document online as of 4/3/2021.)
I was especially interested in Page 7 of the Justia-posted decision:
Under the Lanham Act, even “incontestable” marks are subject to enumerated statutory defenses. See 15 U.S.C. SS 1115(b)
A Glaring Omission
The list of statutory defenses used by defendants (listed on page 7) omits what seems to me, the most compelling defense:
“(7)That the mark has been or is being used to violate the antitrust laws of the United States;” (See: https://www.law.cornell.edu/uscode/text/15/1115)
According to the Department of Justice (https://www.justice.gov/atr/ antitrust-laws-and-you):
The Sherman Antitrust Act
This Act outlaws all contracts, combinations, and conspiracies that unreasonably restrain interstate and foreign trade. This includes agreements among competitors to fix prices, rig bids, and allocate customers, which are punishable as criminal felonies.
The Sherman Act also makes it a crime to monopolize any part of interstate commerce. An unlawful monopoly exists when one firm controls the market for a product or service, and it has obtained that market power, not because its product or service is superior to others, but by suppressing competition with anticompetitive conduct.
The Act, however, is not violated simply when one firm’s vigorous competition and lower prices take sales from its less efficient competitors; in that case, competition is working properly.Department of Justice, https://www.justice.gov/atr/ antitrust-laws-and-you (accessed July, 2019).
Based on my limited understanding of The Sherman Antitrust Act as described by the DOJ, all of the LIFEGUARD trademark registrations should be cancelled. Here’s why:
Why The Sherman Act Applies
Lifeguard Licensing Corp. and previous owners of the Lifeguard® trademark registrations have held a monopoly on commerce related to the Lifeguard occupation and industry for over eighty years, ever since the term was first registered as a trademark in error.
History of the Lifeguard Industry
When the first Lifeguard® trademark registered in 1938, the owners were on the cutting edge of a new market.
According to an online History of Lifeguards in the United States (https:// www.originalwatermen.com/history-lifeguards-united-states)
Duke Kahanamoku, one of Hawaii’s first original watermen, introduced the rescue board between 1910 and 1915, and Captain Harry Sheffield of South Africa is credited with developing the first rescue float (American Red Cross, 1994). Some communities assigned police officers to perform water rescues, but this diverted resources from law enforcement. Eventually, municipalities began to hire men and women trained specifically for water rescue. They were deemed “lifeguards.”
Lifeguards not being presence (sic) at all public bathing areas led the Young Men’s Christian Association (YMCA) to develop a volunteer National Lifesaving Service in 1912. In 1914, Commodore Wilbert E. Longfellow established the American Red Cross Lifesaving, which trained swimmers throughout the United States in lifesaving and resuscitation, then organized them into volunteer corps, and encouraged them to accept responsibility for supervision of bathing activities in their communities… to enhance lifesaving efforts and drowning prevention, to standardize beach lifeguard practices and educate the public about water safety along with improving professionalism among beach lifeguard organizations around the country.
Lifeguard Was Registered in Error
According to USPTO’s Trademark Manual for Examining Procedures (TMEP), this term should be refused as a trademark as it is merely descriptive:
TMEP 1209.03(i) Intended Users
A term that identifies a group to whom the applicant directs its goods or services is merely descriptive.
(MOUNTAIN CAMPER held merely descriptive of retail mail-order services in the field of outdoor equipment and apparel).
A brief study will show that LIFEGUARD is merely descriptive of the user.
The Original Specimen Identified the User
LIFEGUARD’s 1938 trademark registration came almost exactly in the middle between the 1914 American Red Cross Lifesaving program to organize volunteer lifeguards, and the 1964 founding of the USLA.
Further, the first specimen recorded (Mar. 10, 2008) shows a lifesaver, identifying the occupation of the user.
The Term “Lifeguard” Has Always Identified the User
Vintage photos of lifeguards can be seen at the Vintage Everyday website:
Among them you will see these identifying terms on lifeguard clothing (listed in non-chronological order to match the website):
|1942||Life Guard||1926||Encircled Cross Logo|
|1926||L.A. Municipal Guard||1933||Life Guard|
|1945||Guard||1930s||Coney Island Life Guard|
|1921||Guard, Life Guard||1920s||H B Guards|
|1917||Gus Life Guard||1920s||Coney Island Life Guard|
|1935||Guard, Life Guard|
Thus, the historical record shows the term “Life Guard” was used to identify swim safety agents as early as 1917. “Life Guard” appears in photos from 1917, 1920s, 1921, 1930s, 1933, 1935, and 1942. (The terms “Life Guard” and “Guard” were apparently used interchangeably, as they appear on swim apparel worn by people presumably working together in photos from 1921 and 1935.)
Here are four examples from the Vintage Everyday post linked above:
The Term is Required on Apparel Worn by Intended Users
Lifeguards are supposed to wear clothing that says “Lifeguard”:
(“an article of clothing that says “Lifeguard” should be visible at all times.”)
(In many cases, swimwear is red-colored and may be printed with a white cross or the word “Lifeguard.”)
See also: Kiefer Swim Shop Blog, Why Do Lifeguards Wear Red?
Sherman vs. Lanham?
The Lifeguard® trademark is merely descriptive of the user and should be cancelled. Moreover, the mark is a functional feature of the goods (for it is often required by employers), and is thus ineligible for registration. And, whether or not the Lanham Act applies, the LIFEGUARD registrations are being used to monopolize an industry. So the question is, shouldn’t The Sherman Antitrust Act and The Lanham Act be able to stop eighty years of an industry-wide monopoly?
Lifeguard Registrations Summary
The first of eight LIFE GUARD / LIFEGUARD trademarks was registered in 1938. The other seven marks were obtained post-Lanham Act and should therefore be cancelled based on mere descriptiveness, regardless of The Sherman Antitrust Act’s applicability.
|Term||Serial No.||Application Date||Registration No.||1st Specimen Date & Description|
|LIFE GUARD||71395388||7/19/1937||355543||4/20/2018, Ornamental|
|LIFE GUARD||71591193||1/20/1950||562509||None (tags only)|
|LIFE GUARD||75980145||12/18/1998||2754820||7/2/2007, Ornamental|
|LIFEGUARD||75608610||12/18/1998||2831050||Registered for 10.5 years before being canceled due to Section8 non- compliance (11/2014)|
|LIFEGUARD||77567106||9/10/2008||3794035||5/6/2016, Ornamental (“BH Brands” appears to be the brand name as this appears in the top left corner)|
Each of the first 4 marks listed above have NOS Notice of Suit Incoming docs listed in the Document section (Owner has filed suit against third parties attempting to sell “Life Guard” products).
Fun Fact: The “Specimens” of 8/12/09 (SN 75980145) are Product tags announcing:
“Officially Licensed Life Guard products. Important Legal Warning! Please be advised: Lifeguard is a federally registered trademark of Lifeguard Licensing Corporation New York, NY. LIFEGUARD was registered on August 5, 1952 (Reg.#0562509) and on August 26th 2003 (Reg.#2754820) with respect to a variety of products. Lifeguard Licensing Corporation will take all necessary action to protect its rights, as well as the rights of all current licensees.”
This mark has been a cash cow for the Lifeguard Licensing Corp. since 1938 when the first mark was granted. The term is a merely informational message that is widely used on shirts and other products to describe the intended user. And it’s frequently required by employers.
Yet one company in America has controlled this term for the past 8 decades, all because they were first in line to the trademark party.
80 years of extortion. Ugh.
Fun Fact: The parent company is popularityproducts (dot) com. From that website, you may access: BeachLifeguard (dot) com, “the official store for the Lifeguard® Brand.”
Popularity Products is also a licensed retailer of “I ♥ NY” products. That brand is registered by New York City despite the failure to function of “I ♥ DC” (see TMEP §1202.04, and my Halo-effect post in Part 10c).
Hope this information is helpful to you.
Yours for Freedom,
The Trademark Canary