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Firehouse Subs Fraud on the USPTO - 18 U.S.C. Section 1001
By Author, William H. Rogers
Published Online 06/24/2016 - All Rights Reserved / Registered Copyright(s)
2016 Firehouse Subs Franchise Trademark Fraud. Who Criminally violated 18 U.S.C. § 1001?
The 2011 Jury Verdict regarding the Calli Bakers (Firefighter, Capt. Heath Scurfield) verses Firehouse Subs (Firehouse Restaurant Group, Inc.) Federal Lawsuit and subsequent Appeal was followed by many in the franchise business.
In 2016 many in the franchise industry consider any further discussions about the willful, fraudulent activities by Firehouse Subs, Co-Founder's Chris and Robin Sorensen...old news.
Alas, it is a distant memory that Firehouse Subs, Co-Founder's Chris and Robin Sorensen alongside Trademark Attorney, Richard S. Vermut (Attorney-Client Privileges) had procured Trademark Application(s) by willful, material fraud on the U.S. Government (United States Patent and Trademark Office / USPTO).
Yet there still are many unanswered legal questions that remain. One such important, legal question is who was held accountable for the criminal violations of 18 U.S.C. §1001?
The short answer is no-one to date. The only penalty after over 3 years of Federal District Court actions that led to an Appeals Settlement in July 2012 was that Registration Number 3173030 was required by USPTO / TTAB to expire and/or was left to be canceled on June 28, 2013 regarding “Renewal” under (Section 9).
However, the Firehouse Subs Trademark Portfolio consists of 60+ "Firehouse" Subs Trademark Applications in Registration. All of those 60+ "Firehouse" Subs Trademark Applications in Registration were clearly listed and cataloged in the lawsuit; Calli Bakers (Firefighter, Capt. Heath Scurfield) verses Firehouse Subs (Firehouse Restaurant Group, Inc.).
But only one (1) Trademark Registration Number 3173030 was not “renewed” under (Section 9) and left to be canceled as a penalty??? That very modest penalty should cause a reasonable mind to ask why?
This article, at this point and time, serves up Q&A about who was complicit and should be held accountable for the criminal violations 18 U.S.C. § 1001. There indeed WAS a crime(s) under a 18 U.S.C. §1001 evidenced by signed “Declaration(s)” but to the date of this writing there has been no-one held accountable. Did any authority (USPTO / TTAB) report the crime that clearly violated 18 U.S.C. §1001? Not to the date of this writing; that the Author is aware, even after an OED Compliant filed January 21st 2016.
First, what is the Criminal penalty by signing the "Declaration" section of Registration Number 3173030 under 18 U.S.C. §1001?
The Statutory language of 18 U.S.C. §1001. Statements or entries generally is the following;
(a) . . . [W]hoever, in any matter within the jurisdiction of the executive, legislative, or judicial branch of the Government of the United States,[ 1 ] knowingly and willfully -- (1) falsifies, conceals, or covers up by any trick, scheme, or device a material fact; (2) makes any materially false, fictitious, or fraudulent statement or representation; or (3) makes or uses any false writing or document knowing the same to contain any materially false, fictitious, or fraudulent statement or entry; shall be fined under this title or imprisoned not more than 5 years.
Under 18 U.S.C. § 3571, the maximum fine under Section 1001 is at least $250,000 for individuals and $500,000 for corporations. Alternatively, if any person derives pecuniary gain from the offense, or if the offense results in a pecuniary loss to a person other than the defendant, the defendant may be fined not more than the greater of twice the gross gain or twice the gross loss.
Secondly, the general answer to who should be held accountable under 18 U.S.C. § 1001 is Richard S. Vermut, Firehouse Subs IP "Attorney of Record" at the USPTO under 37 C.F.R. §11.18(b)(2)(i).
The specific answer purportedly in view of the facts is Mr. Vermut's underling at the time; Ms. Tala A. Woods, unwittingly signed-off on the "Declaration" 18 U.S.C. § 1001 per Mr. Vermut's advisement and/or instructions to sign-off on the Registration Application Number 3173030.
Pursuant to 37 C.F.R. § 11.18(b)(2)(i), a registered practitioner who presents a paper to the Office [implicitly] certifies to the best of his or her knowledge, information, and belief formed after an inquiry reasonable under the circumstances that, inter alia, the paper is not being presented for any improper purpose. A practitioner who submits an information disclosure statement without inspecting the submitted documents -i.e., merely acts as a conduit for another person – is considered to have made a false certification to the Office.
It is my firm belief Ms. Tala A. Woods was just a pawn used one time by Richard S. Vermut (TTAB "Attorney of Record") to file the Registration Application Number 3173030 based on my fact findings. Whereas, BEFORE and AFTER the Application of Registration Number 3173030 in March 2003 either Richard S. Vermut or Firehouse Subs, Co-Founder, Robin Sorensen always signed-off on all the "Declaration(s)" under 18 U.S.C. § 1001.
WITH EMPHASIS, the main reason I unequivocally believe Ms. Tala A. Woods was a pawn used by Richard S. Vermut ("TTAB Attorney of Record") and Firehouse Subs, Co-Founder, Robin Sorensen is because in my fact findings ALL the other (29 Trademark Applications) in the "Declaration(s)" under 18 U.S.C. §1001 AFTER the fraudulent Application of Registration Number 3173030 in March 2003 were signed-off by either Mr. Richard S. Vermut or Robin Sorensen.
In other words, ALL the other 29 Trademark Applications of Firehouse Subs (Firehouse Restaurant Group) in the "Declaration(s)" Section AFTER the fraudulent Application of Registration Number 3173030 in March 2003 clearly violate 18 U.S.C. §1001 because Richard S. Vermut or Robin Sorensen DID have absolute "foreknowledge" since "August 2002" of others using the word "Firehouse".
Please see the Exhibit and/or designated links below.
The BIG PICTURE in this Firehouse Subs illicit Trademark Application matter is Mr. Richard S. Vermut alongside Robin Sorensen had admitted on the public Federal Court Record to having full foreknowledge in "August 2002" of other Senior Users of the word "firehouse" (Firehouse Grill & Pub Inc, Tampa, FL.) during the Application of Registration Number 3173030 filed in March 2003 and that Registration Application was found to be obtained by fraud in 2011. Thereafter, despite the date of "August 2002" given in sworn Trial Testimony by "Sorensen" Richard S. Vermut alongside Firehouse Subs, Co-Founder, Robin Sorensen filed 25+ Trademark Registration Applications AFTER "August 2002" regarding the word mark(s) "Firehouse" that as a matter of law repeatedly violated 18 U.S.C. §1001.
***PLEASE SEE ROBIN SORENSEN'S "DEPOSITION / TRIAL TESTIMONY" EXHIBIT LINKED HERE [From the Federal District Court Record, Florence South Carolina Case#: 4:09-cv-00618-RBH Entry Number 241 Page 6 of 35 ]
The material admissions in 2011 (Exhibited Above) by Robin Sorensen alongside Attorney, Richard S. Vermut that they fully knew of Senior Users in "August 2002" like Firehouse Grill & Pub Inc, Tampa, FL during the Application of Registration Number 3173030 in March 2003 are distinctly on the Federal Court Record. The TTAB Docket more importantly and very distinctly shows Richard S. Vermut alongside Robin Sorensen under 18 U.S.C. §1001 subsequently filed and “Obtained” “25+ more Trademark Applications AFTER "August 2002" and the fraudulently obtained Registration Number 3173030 filed in March 2003 to further enlarge their "Firehouse" Subs Trademark Portfolio.
The Lanham Act §14(3) permits cancellation of a U.S. trademark registration, at any time, if the registration “was obtained fraudulently.”
"Obtained" in this context has been interpreted to mean not only the procurement of the initial registration, but the maintenance (Section 8), renewal (Section 9), and incontestability status (Section 15) of an existing registration.
“Fraud in procuring a trademark registration or renewal occurs when an applicant knowingly makes false, material representation of fact in connection with his application.” Torres v. Cantine Torresella S.r.l., 1 U.S.P.Q.2d 1483, 1484 (Fed. Cir. 1986).
Furthermore, as a matter of law, everytime Richard S. Vermut and/or Robin Sorensen (or others) subsequently file a maintenance (Section 8), renewal (Section 9), and incontestability status (Section 15) of an existing registration (Trademark Application) made AFTER "August 2002" under 18 U.S.C. §1001 they repeatedly violate Federal Trademark Law (Lanham Act / 18 U.S.C. §1001).
Robin O'Neal Sorensen, Firehouse Subs Co-Founder has unlawfully signed-off on the majority of these maintenance (Section 8), renewal (Section 9), and incontestability status (Section 15) under 18 U.S.C. §1001 even AFTER the "August 2002" date given in his Federal Court Testimony. Example 1 | Example 2 | Example 3 | Such Trademark Application actions are also in violation of the Lanham Act.
An another deplorable aspect in this matter is AFTER "August 2002" and the fraudulently obtained Registration Number 3173030 on the common word "FIREHOUSE" filed in March 2003 Attorney, Mr. Richard S. Vermut alongside Robin Sorensen went about filing intimidating and costly lawsuits under the color of law (many listed on the TTAB & Federal Court Docket) against over 25 known Small Businesses across the Nation using the common word "Firehouse". You can count the lawsuits in the TTAB Record HERE. It is anyone's guess how many "Cease & Desist" Letters were issued threatening other small businesses nationwide to stop using the common word "Firehouse".
The material facts are Attorney, Richard S. Vermut alongside Robin Sorensen AFTER they had admitted on the Federal Court Record to having foreknowledge since "August 2002" of other Senior Users of the word "firehouse" (Firehouse Grill & Pub Inc, Tampa, FL.) and during their Application of Registration Number 3173030 filed in March 2003 they then subsequently “obtained” “25+ more Trademark Applications and/or “obtained” maintenance (Section 8), renewal (Section 9), and incontestability status (Section 15) on well over 25+ Trademark Registration Applications filed AFTER "August 2002" which repeatedly violated 18 U.S.C. §1001.
It is apparent Robin Sorensen and his Trademark Attorney Richard S. Vermut are extremely absentminded...or crooks...or both.
THE QUESTION: Who Criminally violated 18 U.S.C. §1001?
THE ANSWER: Mr. Richard S. Vermut in concert with Robin Sorensen willfully and many times over. (purportedly 29 Counts) Ms. Tala A. Woods unwittingly as directed; one time, by Mr. Richard S. Vermut.
As if the truth in facts about this Trademark Fraud matter outlined above were not unlawful and corrupt enough Mr. Richard S. Vermut alongside Firehouse Subs, Co-Founder, Robin Sorensen in April 2015 filed yet another lawsuit “Opposition” before the Trademark Trial and Appeals Board (TTAB) TTAB Case Number: 91221728 claiming exclusive rights to the word “firehouse” once again. The case against Columbia "Firehouse" Restaurant and Bar in Alexandria, Virginia, as Represented by Attorney, Michael J. Chamowitz, was supposedly “DROPPED” as reported by the Alexandria Times in February 2016 but is in “pending” status before the TTAB as of the date of this publishing.
In conclusion, basically, the "Firehouse" Subs, Co-Founder, Robin Sorensen with absolute foreknowledge unlawfully ("backed-into") ALL the Firehouse Subs Trademark Applications filed State and Federal since 1994 and in violation of 18 U.S.C. §1001.
There never was a "likeliness of confusion" over the common word "firehouse" in the many costly lawsuits brought by Firehouse Subs since 2002 only a likelihood that Co-Founder, Robin Sorensen and brother Chris (alongside Attorney-Client Privileges) are confusingly deceptive and unscrupulous which are certainly not the traits founded in Firefighters. They are indeed though "Trademark Bully's".
The TTAB Trial Record shows "Firehouse" Subs, Co-Founder, Robin Sorensen and his brother Chris ruthlessly hurt the small business person for which they once were in 1994 until they made $357,000.00 from the first location in Jacksonville Florida. Accordingly, it can only be that this type of Corporate Greed based in a Franchise Model makes you forget where you came from and who you are.
As for the author of this article, I stand-on my personal, first-hand knowledge which is based in hard facts that both Chris and Robin Sorensen had absolute foreknowledge of other Senior Users of the word "Firehouse" since late 1993. One restaurant in particular named "Firehouse" is a Restaurant and Bar in New York City for which Robin Sorensen personally visited before the first Firehouse Subs Store opening in 1994.
By William H. Rogers, Jr. - Article Published
Former Professional Firefighter (Rockledge, Florida),
Concerned Citizen and Investigative Author
Author of “Firehouse Subs Fraud on the USPTO” © Copyright
This is an excerpt from the book publishing due out in late 2016 or early 2017.
Other Published Blue Mau Mau Online Articles by this Author: