Dervaes Trademark Background with James Bertini Regarding the Facebook Take Down

New Docket Entry #101 at TTAB http://ttabvue.uspto.gov/ttabvue/v?pno=92053837&pty=CAN&eno=101 This entry shows the papers submitted at the new California lawsuit against Dervaes and Rubio by James Bertini. Of special interest is the Declaration of Mignon Rubio beginning around page 90, parts of which are excerpted below. Rubio and Dervaes  (see emails in docket above)  tried to restore Bertini’s Facebook page but Bertini failed to respond–see numbers 5, 6, 7, 8 below.

DEFENDANT’S ADDITIONAL FACTS
1.The action Defendant took on February 13, 2011, regarding the Plaintiffs
Facebook page was on her own initiative, using her own computer in her room by
herself. When she saw an injustice, she felt strongly compelled to notify Facebook
about Plaintiffs violation of Dervaes Institute’s Mark “Urban Homesteading.”
2.Defendant acted alone as a mother who wanted to do something to defend
against the repeated infringement by others of the Mark that her adult children
have worked for over ten years to establish. Defendant sought no permission to
fight for her children’s livelihood.
3.Defendant’s children have helped their father, Jules Dervaes, build up
Dervaes Institute whose registered trademark was being stolen by Plaintiff on
Facebook. Defendant acted impulsively to report that crime because she wanted to
stop the damage being done to their work by an infringing rival on Facebook.
4.The Facebook page that Defendant reported as being in violation of a
trademark was created by Plaintiff in February 2010 (Complaint page 3, paragraph11)
5.As a result of Defendant notifying Facebook, the company —recognizing the
infringing use by Plaintiff—took down the page on or about February 14, 2011.
The policy of Facebook was to give the violator an advance notice before
removing the page so that the owner could take action to save the page information and/or create a new page by changing the violating name. Plaintiff did not avail itself of this opportunity to alter the outcome.
 
 
6.A few days later, Dervaes Institute got an email from James Bertini, owner
of Plaintiff, regarding the Facebook take down request. Since Defendant was
personally responsible for submitting the fact of the Plaintiff’s violation to
Facebook, Jules Dervaes had Defendant write a note of apology to James Bertini,
and state that Defendant would request to have Plaintiff’s page restored if it complied with trademark law by changing its infringing Facebook name. (See Exhibit A)
 

7.Several unsuccessful attempts were made by Defendant to have the page restored. However, Defendant never received confirmation from James Bertini that he would abide by the terms, as noted in Defendant’s initial letter to him.

8.During the Trademark Trial and Appeal Board (TTAB) cancellation proceeding instituted by Plaintiff in April 11, 2011 (Complaint page 8, paragraph 36), in the discovery process, Plaintiff submitted a letter that it had sent to Facebook asking if Facebook would restore Plaintiff’s page if it changed the name However, this communication was never conveyed to Defendant or to Jules Dervaes during the time when Defendant was trying to help Plaintiff save its page by changing its infringing name to be in accordance with the policy of Facebook.

9.Plaintiff never pursued the above inquiry to conclusion in order to resolve the legal matter on its own; but, instead, in April 2011, it filed a lawsuit against Dervaes Institute for cancellation of the Mark. In the same month, Plaintiff created a new, replacement Facebook page with a new name (DUH) for its business, which has remained online-for almost four years. […]

“URBAN HOMESTEADER” now an application for registered MARK on the Supplemental Register but it was not registered by Dervaes. There are TWO new registrations. Here is one.

Note that this registration also applies to the Internet use.  As a  Mark on the Supplemental Register, in order to acquire distinctiveness to be put on the Principal Register, the owner  must police its MARK (it’s the law) just  like the Dervaes Institute did for “Urban Homesteading” and contrary to what others have stated falsely on the internet about the Supplemental Register.  However, this trademark application was recently suspended  https://trademarks.justia.com/860/62/the-urban-86062019.html Will there be a community  protest against this last available term to prevent this registration from being finalized?

Word Mark THE URBAN HOMESTEADER
Goods and Services IC 041. US 100 101 107. G & S: Entertainment services, namely, the production of television programs and multimedia production services, about how to adapt homesteading techniques into urban environments, distributed as a live-action television series, and over cable, satellite, audio, interactive and video media, Internet, mobile handsets, and by means of a global communications network. FIRST USE: 20140505. FIRST USE IN COMMERCE: 20140505
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 86062019
Filing Date September 11, 2013
Current Basis 1B
Original Filing Basis 1B
Date Amended to Current Register May 20, 2014
Owner (APPLICANT) Glista, Jeannine M DBA Indigo Moon Media INDIVIDUAL UNITED STATES 12282 Red Dog Road Nevada City CALIFORNIA 95959
Attorney of Record Wendy Peterson
Type of Mark SERVICE MARK
Register SUPPLEMENTAL
Live/Dead Indicator LIVE

Court Filings of Colorado Federal Case against Dervaes Institute, et al, by James Bertini

See Docket entry #98 at TTAB http://ttabvue.uspto.gov/ttabvue/v?pno=92053837&pty=CAN&eno=98

Many of the court filings (about 500 pages)  filed by parties, Dervaes Institute, Mignon Rubio, Jules Dervaes and Denver Urban Homesteading LLC can be read online, including the Final Judgment Court Decision in favor of Dervaes Institute, Jules Dervaes and Mignon Rubio .

REDSKINS LOSE MARK …OR NOT?

What this decision does not mean:  this decision does not, however, require the Washington D.C. professional football team to change its name or stop using the trademarks at issue in this case

 
Losing the federal registration of a trademark does not necessarily mean that the owner loses all  legal rights in the mark. This is because trademark rights in the United States come from use of a  mark on or in conjunction with goods or services, not merely from the additional, optional step of federal registration.
 
The TTAB determines only whether a mark can be registered with the federal government (and thus gain the additional legal benefits thereof), not whether it can be used
.

The mark owner may still have rights in the mark based on use, known as “common law” rights and those rights continue to exist even if the  federal registration  is cancelled.

James Bertini’s Second Petition to the Director DENIED!

James Bertini’s most recent Petition to the Director (the second Petition) was DENIED by TTAB (the Board). It is a very detailed response by the Board which explained that just about everything Bertini is alleging against Dervaes and the Board (the “single hearing” issue) is wrong. Bertini doesn’t understand the law. His first Petition was also denied and his case remains suspended. Here is the recent decision.http://ttabvue.uspto.gov/ttabvue/v…

Dervaes Institute reveals more backstory with Adam Parfrey (Process Media), Kelly Coyne and Erik Knutzen

Defendant Dervaes Institute submitted its rebuttal of W&S’s Motion for Summary Judgment at the TTAB cancellation proceeding. In other words, they disputed the “undisputed facts” which W&S submitted to the Board as proof of genericness.

What is even more interesting is Jordanne’s declaration submitted with DI’s opposition. In it she states the following points (read the entire declaration online for more details):

1. Kelly Coyne and Erik Knutzen came to the Dervaes home for a tour in 2006. The Dervaes took their picture and Erik and Kelly admitted in court papers that they did tour the Dervaes homestead.

2. Process Media (“PM”)  (Parfrey) asked the Dervaes to write a book first. When they refused, PM asked Erik and Kelly to write a book. The book was titled The Urban Homestead. They also admitted during this proceeding that agents of Process Media viewed the Dervaes Path to Freedom website.

3. Parfrey also stated that “Urban Homestead” was with attorneys for trademark registration for a TV show in 2008 (and not by the Dervaes as, according to Jules Dervaes’ declaration, this was before their attempt to trademark it!). see Blogger: Dustpan Alley (OLD) – https://www.blogger.com/comment.g?blogID=20487305&postID=7773681666882712811&isPopup=true Parfrey’s comment:

Anonymous Anonymous said… I think your project sounds great, and it’s of great interest to me, as the co-publisher of Kelly Coyne and Erik Knutzen’s fabulous book, “The Urban Homestead.” I can confirm that this book’s title is now copyrighted due to what is seen on the copyright page. As you might know, titles are not the domain of copyright. At this time, “Urban Homestead,” since it’s now in development for a television show, is currently with attorneys for a trademark registration. [bolding mine] A trademark can generally be obtained for a business with multiple uses of the name in question. In any case, that has to do with “Urban Homestead” and not the other variations you’re discussing. I look forward to reading your publication, and you can see Erik and Kelly’s work here: http://www.realitysandwich.com/blog/homegrown_revolution and here: http://www.processmediainc.com and here: http://www.homegrownevolution.com/ All my best wishes, Adam Parfrey Feral House / Process Media  

4. The declaration of Jordanne docket entry #93  also gives insight into the harassment that the Dervaes went through–threats to life and property, attacks on the website, police and FBI reports.

Why, in 2011, did Parfey of Process Media who previously said the term was with attorneys for trademarking (see dustpan alley above) make this remark  on TBUH :

Adam Parfrey We appreciate the Dervaes, as did many, from their Oprah period, but we don’t appreciate them attempting to ruin people’s livelihoods and dictating to many that they are not allowed to use a more than century-old generic term, and one used widely long before the Dervaes ever did, without placing a registration notice on it and linking this use of generic language to a specific website. Is this Monsanto? Perhaps not, but it’s wielding and misusing trademark and patent law to harm the lives of others. We fully support April and her Facebook page here!

My comment: Apparently, it wasn’t considered “more than a century-old generic term, and one used widely” when those attorneys were trying to trademark it before the Dervaes! It astounds me that he can say such things when the Dervaes are the ones that originally used the term in a common law trademark manner before anyone else did (see court papers at TTAB for an explanation) proving that Erik and Kelly are imitators and copycats. Nothing wrong with copying the work of someone you admire but you must not  misuse that person’s intellectual property.  Court papers also prove that the Dervaes did not try to ruin anyone’s livelihood but were protecting their hard work from others who were using the term without legal permission thereby trying to live off the Dervaes’ brand name and cause confusion in the marketplace. To understand all this better,  also read papers in the Denver Federal court case as well as trademark law. The question is: Who is really hurting/ruining whom?

Of special interest is the declaration of Jules Dervaes docket entry #94 which should be read in its entirety. A declaration is done under oath and penalty of perjury. Here is Jules Dervaes’ statement regarding his reasons for trademarking the terms:

26.       As a non-profit, Registrant was not formed to make money but to provide educational and entertainment services about a one-of-a-kind plan to save the environment.  The combined intellectual property that I created was so unique that it attracted a significant amount of unsolicited attention from major media outlets, both in the United States and abroad.  In April 2009, a milestone of Registrant being invited to be featured on OPRAH’s Earth Day Special demonstrated the singular nature of our work.  See Exhibit F attached hereto.

Also see #5 of his declaration which states [paraphrased] that after he had heard about Parfrey’s wanting to trademark the term, Dervaes went to his attorney to have him do it for Dervaes Institute because he had been using the term continuously since circa 2002, along with the ten elements.

I will let the articles and comments speak for themselves. I refuse to speculate on agendas and motives of Parfrey, et al, as April Alexander as Admin did, who allowed such posts,  and others at TAKE BACK URBAN HOMESTEADING who, without any proof of their assertions, made de facto pronouncements of knowing the Dervaeses’ hearts and agendas! I will say that the TBUH campaign was conducted in a very shabby and inflammatory  manner and not in the classy way that Oak Park Hates Veggies and the Fire Cider controversy have been handled. [Correction and public apology about my  Fire Cider comment here] There, the organizers admonished against personal attacks and unsupported statements. While they disagreed with the actions of those whom they were opposing, they frowned upon and resisted ad hominem attacks. The TBUH campaign and those involved in such a  hateful manner have been a detriment and embarrassment to the community of homesteaders. They have only diminished themselves and their cause. Now, the proof and truth are now publicly known for all to see here. One does not need a federally registered trademark sell its goods or offer services.

The Dervaes have used the terms since 2002 before anyone else in recent history to promote its services of green city living.  Money is NOT the reason for getting a trademark just as getting a copyright does NOT get you money  It is a protection for a business owner to indicate SOURCE.  Copyrights and trademarks are automatic when CREATED /USEDunder common law and need not be federally registered which offers additional protection from misuse nor does one necessarily have to receive money for either.  See this link https://www.wellsiplaw.com/why-should-i-get-a-federal-trademark-registration/

Anyone from this point on who insists that the Dervaes’ agenda/motives are anything else, such as money or greed, etc., without corresponding proof and their willingness to declare such under penalty of perjury is lying and could face legal consequences. There is more to tell about what has been found in the court papers–the true, complete story  and not the online false/fictional information– but I’ll save that for later. More on the backstory here [  Also see:  “URBAN HOMESTEADER”  trademark application at USPTO —2 NEW APPLICATIONS]