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2016 Firehouse Subs Franchise Trademark Lawsuit Update;
Firehouse Subs Pays to Put Out Old Flames
By Author, William H. Rogers
Published Online 08/19/2016 - All Rights Reserved / Registered Copyright(s)
UPDATE: In a Settlement Agreement stipulation that quote; “fully satisfies everyone’s interests", as Firehouse Subs confirmed in a report by the Alexandria Times News in February 2016, the Defendant, Columbia Firehouse Restaurant & Bar, in Alexandria VA. "Abandon" their Trademark Registration filing at the USPTO.
The old legal flames were extinguished by a quid pro quo "settlement" agreement that was finalized by an "Inter Partes Decision" ("between the parties") and the Trademark Application withdrawn on August 10th 2016.
This recent "settlement" finalized by the "Inter Partes Decision" and the "withdraw" of the Trademark Application Number: 91221728 may lend to a false impression and a public appearance that Firehouse Subs is able to somewhat enforce the "Registered Trademarks" and/or "Common Law Trademarks" with regards to the Firehouse Subs Trademark Portfolio. However, despite the current; this for that, "settlement" deal concerning Columbia Firehouse Restaurant & Bar and the TTAB "withdraw" the Firehouse Subs Trademark Portfolio remains UNENFORCEABLE under the Lanham Act and the Madrid Protocol as a matter of law.
08/19/2016 INVESTIGATIVE REPORT UPDATE:
This August 19th 2016 Article "Firehouse Subs Pays to Put Out Old Flames" updates the reporting from the August 5th 2016 Investigative Article by this Author; LINKED HERE.
Consequently, this Author stands behind his defined hard facts in his published August 5th 2016 Article or other Investigative Blog Publishings. Whereas, all the Investigative Articles by Author, William H. Rogers, Jr. published are based in hard facts and material evidence and the rule of law.
CITING: Lone Star Steakhouse & Saloon, Inc. v. Alpha of VA, Inc., 43 F.3d 922, 931, n.12 (4th Cir. 1995), which said that “the Lanham Act provides that trademarks procured by fraud are unenforceable".
ACCORDINGLY, the Lone Star court, in dicta, made the leap that a trademark registration procured by fraud means that the common law trademark is also unenforceable.
As a matter of law, “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).
The Author, William H. Rogers, Jr., currently holds eight (8) United States Copyright Registrations (an Investigative Documentary Series) concerning Firehouse Restraurant Group, LLC ("FRG") Firehouse Subs, Inc., inter alia.
THE FACTS STATED IN THIS LINKED SWORN AFFIDAVIT ARE TRUE, BASED IN HARD FACTS AND ARE ACCURATE AND CREDIBLE.
Further details in facts and evidentiary Exhibits of "fraud" by the Franchisor, Firehouse Subs are outlined in this Authors other Investigative Articles. LINKED HERE
COLUMBIA "FIREHOUSE" STORY UPDATE:
It was clearly and accurately reported on February 5th 2016 by the Alexandria Times News Paper, Writer, Chris Teale and solidly confirmed in statements by Cecily Sorensen of Firehouse Subs that the settlement agreement between the two sides “fully satisfies everyone’s interests". These were the news headlines and facts in the Alexandria Times News report: "Columbia Firehouse trademark opposition dropped by Firehouse Restaurant Group" [sic] . Now as of August 10th 2016 Columbia Firehouse Restaurant and Bar, Alexandria VA. by and through Attorney, Michael J. Chamowitz has subsequently "Abandon" their Trademark Registration Application before the Federal Trademark Trial and Appeal Board (TTAB) purportedly as part of the mutually satisfying settlement agreement back in February 2016.
Cecily Sorensen the VP of Corporate Communications for Firehouse Subs (a sister of the Co-Founders, Robin and Chris Sorensen) said in an email to the Alexandria Times News, Reporter, Chris Teale that the agreement between the two sides “fully satisfies everyone’s interests". Her statement to the local Press was related in the February 5th 2016 news article "Columbia Firehouse trademark opposition dropped by Firehouse Restaurant Group".
The latest "agreement" news development on August 10th 2016 is not schizophrenic public statements to the media outlets by Firehouse Subs, through Cecily Sorensen the VP of Corporate Communications.
It is the result of...very deep Corporate pockets and a slick lawyer, like Richard S. Vermut for Firehouse Subs making everything alright between legal parties by negotiating a quid pro quo Settlement Agreement ...but "the agreement between the two sides" as reported does not make everything truthful. As it has been said; "there is no Statute of Limitations on the truth".
It appears the brazen "sue-to-settle" legal posture with ill-gotten Trademarks by the Franchise "FIREHOUSE" Subs Co-Founder, Robin Sorensen in concert with Richard Vermut and alongside Attorney-Client-Privileges has worked very well since 1999.
This "sue-to-settlement" legal posture over the years by the Franchise "FIREHOUSE" Subs evidently makes Co-Founder, Robin Sorensen feel like he really does own exclusive rights to the word "FIREHOUSE"...OR that Firehouse Subs; the Franchiser, can claim, contend or justify to the badly misled Franchisees' that they do in fact own or control the word "FIREHOUSE". When in fact under the Federal Law they do not have any exclusive rights or claim to the word mark "FIREHOUSE" and therefore cannot legally enforce such intellectual property rights.
This type "sue-to-settle" legal tactic with quid pro quo demands by Firehouse Subs is void of any moral and principled behavior...and is known as Fraudulent Conversion and Trademark BULLYING. It is ESPECIALLY, deplorable in light of the fact that "FIREHOUSE" Subs, Co-Founder, Robin Sorensen in concert with Richard Vermut and alongside Attorney-Client-Privileges know full well that ALL the Firehouse Subs Trademarks were obtained illegally under the rule of law, Federal and State.
Moreover, this unprincipled business conduct and hostile takeover of another individuals property rights by Firehouse Subs, Co-Founders Robin and Chris Sorensen regarding the common word "FIREHOUSE" is NOT at all Firefighter like behavior or values.
Regardless, this latest legal development Columbia Firehouse Restaurant and Bar in Alexandria VA., only serves as solid proof that the old adage "everyone has a price" remains to be true. HOWEVER, it does NOT change in any way, shape or form the legal facts in material evidence that ALL of Firehouse Subs Trademarks were "fraudulently obtained" pursuant to the Lanham Act.
Columbia Firehouse Restaurant and Bar, Alexandria VA. as represented by Attorney, Michael J. Chamowitz did state to this Author he was "still working out details" in a "thank you" email on February 11th 2016 regarding their "Settlement" BEFORE he/they subsequently "Abandon" their Trademark Registration on August 10th 2016 after the "inter partes decision". (Latin for "between the parties.")
To be honest...for the right money this Author would agree to change his name. Additionally, this Author would entertain an attractive quid pro quo offer to use what used to be his name.
The Author's above statement, as crazy as it sounds, is basically what occurred in the Columbia Firehouse Restaurant and Bar, Alexandria VA., "settlement" outcome and exactly what occurred in 2001 regarding the Firehouse Restaurant and Bar in New York City also called "Firehouse" Tavern.
It is the old.... "if you can't beat them, join them" attitude for many of the small business owners who are attacked legally by the powerful Franchise Giant, Firehouse Subs.
For the less fortunate small business owners legally attacked before 2012 for using the name "FIREHOUSE" in their trade name they were forced to change their name because they used the word "FIREHOUSE" in it and then they had to go about changing menus, signage, paper products, etc and bear that large expense. Thankfully, this lawsuit plague (DBA name change) has not occurred since 2012 to other small business owners around the nation or internationally...yet.
If the past agreements dictates the future Columbia "Firehouse" Restaurant and Bar will keep and retain the use of "Firehouse" in their trade name. After all Columbia Firehouse is actually an authentic "FIREHOUSE" from 1871. SEE HERE
Nevertheless, the Columbia Firehouse Restaurant and Bar, Alexandria VA., settlement terms in fact and as a matter of law do NOT eliminate the reality that ALL Firehouse Subs Trademarks ("collectively, the marks") were "obtained fraudulently".
Bear in mind that the Columbia Firehouse Restaurant and Bar, Alexandria VA. legal matter being TTAB Case Number: 91221728 was NOT legally won by a preponderance of evidence, for which the burden of proof was clearly on the Plaintiff, Firehouse Subs, to prove that there was an "infringement" or "likeliness of confusion" over the Trademarks using the word "FIREHOUSE". This case was concluded by a structured quid pro quo Settlement Agreement between the two legal parties as verified in a statement by Cecily Sorensen the VP of Corporate Communications for Firehouse Subs.
There has been only one case-in-chief to date; Firehouse Restaurant Group, Inc. v. Scurmont LLC, Civil Action No. 4:09-cv-00618-RBH, that went the full trial court distance (Trial before Jury with Verdict). This Federal Court Case cited above had the exact legal claims of "infringement" or "likeliness of confusion" over the word "FIREHOUSE" as ALL the lawsuits brought by Firehouse Subs since 1999. This Federal Court Case Civil Action No. 4:09-cv-00618-RBH was unanimously decided in 2011 by a Jury Verdict and then the almost 4 year case came to a conclusion by an Appeals Court "Settlement" Agreement in July 2012.
In that Federal Court Case Civil Action No. 4:09-cv-00618-RBH there was an all important ORDER ("Indicative" Order ) issued by Federal Judge, R. Bryan Harwell and the ORDER had clear directives toward Firehouse Restaurant Group, Inc. stating that the word mark "FIREHOUSE" and any further litigation over the word "FIREHOUSE" would "forevermore" be precluded or barred as a matter of law.
The "infringement" or "likeliness of confusion" over the Firehouse Subs Trademarks using the word "FIREHOUSE" was decided in that Federal Case by that group of 8 Jury Members and those eight individuals on August 11th 2011 clearly concluded that Firehouse Subs, Co-Founders, Robin and Chris Sorensen do not cheat fair in expanding their Franchise empire. SEE A GOOD OVERVIEW OF THE BACK-STORY LINKED HERE.
The reader of this Investigative Article can be the Judge and Jury in the recent lawsuit TTAB Case Number: 91221728 Columbia Firehouse Restaurant and Bar and you, the reader, decide if there is a "likeliness of confusion" regarding the legal parties two (2) Trademarks. HERE ARE BOTH TRADEMARKS in the 2015 / 2016 TTAB dispute.
It is just like Firehouse Subs, Co-Founders Robin and Chris Sorensen to spin Trademark Laws and the public through media. They are experts at doing so; especially, behind the honorable Firefighter persona. Firehouse Subs has spun the public and the Franchisees for years in so many ways. But those other accounts are an assortment of stories for another time.
Simply put, Firehouse Subs, Co-Founders, Robin and Chris Sorensen like to keep their Private Corporation and the Deceptive Trade Practices over the years shrouded in thick blinding smoke concerning the public brand image.
Firehouse Subs legal challenge before TTAB Case Number: 91221728 and the quid pro quo "Settlement" Agreement that “fully satisfies everyone’s interests" is made to appear like they are somewhat of a legal winner or good guys regarding the lawsuit with Columbia "Firehouse" Restaurant and Bar in Alexandria VA., but unfortunately Firehouse Subs, Co-Founders Robin and Chris Sorensen at the center of the matter are losers for the fraudulent, bad faith lawsuits brought since 1999 under the color of law against small business owners nationwide for using the word "FIREHOUSE" in their trade name or logo.
"FIREHOUSE" SUBS SUE-TO-SETTLE & QUID PRO QUO DEALS:
In essence, Firehouse Subs, Co-Founders Robin and Chris Sorensen alongside Attorney, Richard S. Vermut beat up small businesses using the common word "FIREHOUSE" in their trade name who are actually harmless to the Franchise Giant and then Firehouse Subs negotiates stipulations with them (sue-to settle paradigm) which thereby creates a public display that the Franchiser ("Firehouse Subs") is the authentic legal winner and thereby owner of the word "FIREHOUSE".
In the Firehouse Subs unprincipled and shameless "sue-to-settlement" ploy and the subsequent quid pro quo type agreement there may be requirements stipulating the Defendants' use of the common word "FIREHOUSE" in their small business trade name or logo depending generally on how hard the small business fights. In certain circumstances the Mob Boss type negotiations by Firehouse Subs and "settlement agreement" will agree to let the little guy in the mobsters neighborhood (Firehouse Subs Store Territory) use or keep using the word "FIREHOUSE" in their trade name if they can bargain this for that and/or adhere to the Plaintiff, Firehouse Subs terms in Settlement demands and also agree to be adjoined in a Confidentially Agreement.
EMPHASIS ADDED, astonishingly, in those aforementioned type quid pro quo "settlement" circumstances the name "FIREHOUSE" is allowed to still be used in the small business owners trade name and in the restaurant area...but the "likeliness of confusion" legal claims between by Plaintiff, Firehouse Subs against the Defendant (Small Business) that were clearly asserted in the Firehouse Subs lawsuit miraculously goes away.
These type quid pro quo type deals (to use the name "FIREHOUSE") with small business owners first started back in 1999 with an establishment named "Firehouse" Restaurant and Bar in New York City at the time owned by Jeremy Wladis and he had a Trademark ownership in the name of "Firehouse Wings Company" Serial#: 1,903,135. Firehouse Subs filed a Trademark lawsuit in 1999 against "Firehouse" Restaurant and Bar in New York City then cut a quid pro quo type deal and "Firehouse" Restaurant and Bar STILL gets to use the word "FIREHOUSE" in the New York Restaurant name to this day. Wasn't that so awfully nice of "Firehouse" Subs to let them continue to use the word "FIREHOUSE" in their trade name? ESPECIALLY since "Firehouse" in New York City, also known as Firehouse Tavern, was there (long established) BEFORE..."FIREHOUSE" Subs first store opening in 1994. The hard facts are Firehouse Subs Co-Founder, Robin Sorensen personally visited the "Firehouse" Restaurant and Bar in New York City in or around 1993 then the Sorensen brothers turned around and brought a bad faith/deceptive Trademark lawsuit against that NYC business in 1999.
It is pretty ironic that the quid pro quo (this for that) type "settlement" deals by Firehouse Subs, Co-Founder, Robin Sorensen started in New York City known for organized crime and racketeering historically. Accordingly, Firehouse Subs, Co-Founder Robin Sorensen should be liken to the great Mobsters back in the day the way he conducts his Firehouse Subs Franchise "system" expansions by strong arm threats and coercion. Although, preferably New York City should be seen as home to some of the greatest and most courageous Firefighters on the plant.
Subsequently, after a period of quid pro quo negotiations from 1999 to 2001 the Firehouse Subs Co-Founder, Robin Sorensen alongside Richard Vermut paid $130,000.00 to Jeremy Wladis owner of "Firehouse" Restaurant and Bar in New York City (a.k.a "Firehouse Wings Co.") to have the Firehouse NY with Dalmatian Dog Trademark, that Mr. Wladis supposedly owned, assigned to the Firehouse Subs Portfolio and then Firehouse Subs thereafter attempted to control the use of the word "Firehouse" in the restaurant food business (Class 42) by lawsuits from 1999 to the present day. Slick manuveur? Not really. Without the proper due diligence by Firehouse Subs conducted by their Trademark Attorney, Richard S. Vermut the Firehouse NY with Dalmatian Dog Trademark "assignment" in reality was what is legally known as an "Assignment-In-Gross".
This Author spoke to and wrote a letter to Richard S. Vermut (with Exhibit "A" Attached) concerning this "Assignment-In-Gross" Trademark issue, among other vital things related in the discussions, back in 2012. The illegal "Assignment-In-Gross" and/or fraudulent "Assignment" of the Firehouse NY with Dalmatian Dog is a lengthy back-story for another time.
WITH EMPHASIS, the hard fact is Firehouse Subs, Co-Founder, Robin Sorensen visited the "Firehouse" Restaurant and Bar in New York City in or around 1993 BEFORE the first Firehouse Subs Store Grand Opening in 1994.
The real problem Firehouse Subs Co-Founder, Robin Sorensen had and has AFTER visiting the "Firehouse" Restaurant and Bar in New York City in or around 1993 is Sorensen's 1998 Trademark Registration Application and therein him signing the "DECLARATION" under the Federal Law;
37 C.F.R. 11.18 (b) states:
(b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper;
The above law applies to the Trademark Registration Application "Declaration".
See the 1998 Trademark Registration Application by "FIREHOUSE" Subs, Co-Founder, Robin Sorensen file at the United States Patent and Trademark Office on Janaury 26th 1998. LINKED HERE
The above unlawful issues are deceptive trade practices by Firehouse Subs based in hard facts and further details are for another time.
MATERIAL FRAUD PROCURING TRADEMARK REGISTRATIONS FROM "AUGUST 2002" UNDER THE LANHAM ACT:
To echo the last paragraph from the Alexandria Times News by Writer, Chris Teale..."this latest legal challenge could have been a way for the Firehouse Restaurant Group to re-assert itself in its use of the “FIREHOUSE” word, but with a settlement reached outside of court, that challenge appears to have failed".
WITH EMPHASIS, regardless of the latest news cycle and spin job; Firehouse Subs Co-Founder, Robin Sorensen; himself, provided sworn Federal Court testimony that does confirm; as a matter of law, that over 1/3 of the Firehouse Subs Trademark Registrations as listed in the TD Bank Agreement "Schedule A" ARE considered to be "fraudulently obtained" pursuant to The Lanham Act - United States Code 15 because the Trademark Registration Applications were unlawfully applied for AFTER the dateline of "August 2002".
In other words, by Firehouse Subs Co-Founder, Robin Sorensen provided sworn Federal Court testimony over 1/3 of Firehouse Subs Trademark Registration Applications filed AFTER August 2002 were "fraudulently obtained" and are "Invalid and Unenforceable" pursuant to the Lanham Act - United States Code 15.
* Please see the June 24th 2016 Article detailed "EXHIBITS" LINKED HERE if you have not already done so.
THE FIREHOUSE SUBS TRADEMARK HARD FACTS IN MATERIAL EVIDENCE REMAIN:
As a matter of law, NOT slick legal negotiations with quid pro quo settlement agreements, Trademark enforcement is rooted in the following legal precedence;
CITING: Lone Star Steakhouse & Saloon, Inc. v. Alpha of VA, Inc., 43 F.3d 922, 931, n.12 (4th Cir. 1995), which said that “the Lanham Act provides that trademarks procured by fraud are unenforceable". AN OVERVIEW LINKED HERE
ACCORDINGLY, the Lone Star court, in dicta, made the leap that a trademark registration procured by fraud means that the common law trademark is also unenforceable.
“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).
THE GOOD NEWS FOR SMALL BUSINESS OWNERS NATIONWIDE & GLOBALLY:
Once again, it makes no legal matter if the legal issue turns on the so-called "Registered" Trademarks (that were fraudulently obtained) or that legal claims are brought based on the "Common Law Trademarks" Firehouse Subs (Firehouse Restaurant Group, Inc.) CANNOT ENFORCE "collectively, the marks" that they offered and sell / license to their Franchisees...any longer or forevermore or anywhere (Nationwide or Globally).
This latest news update regarding Columbia Firehouse Restaurant and Bar, Alexandria VA is even better legal music to the ears of small business owners everywhere using the word "FIREHOUSE" in their trade name or logo. Should Firehouse Subs bring a Trademark lawsuit against you...for "likeness of confusion" as confusing as it seems they will compensate you handsomely by quid pro quo negotiations to settle but you MUST be willing to stand up to the unscrupulous fraudster and Trademark Bully; Firehouse Subs, for your property rights!
Contact the Author of the published Investigative Articles; William H. Rogers, ( billyrogersemail [at] gmail [dot com] ) should you be unclear what to do if and when you are legally attacked by Firehouse Subs.
Once again, be it clearly and concisely stated publicly in this article, that "Firehouse" Subs, Co-Founder, Robin Sorensen along side his brother Chris Sorensen (as supported by Attorney-Client Privileges) DID have absolute foreknowledge of other Senior Users of the word "FIREHOUSE" in 1994. Despite this keen foreknowledge the Sorensen brothers, as supported by Attorney-Client Privileges, proceeded to willfully and unlawfully file ALL the Firehouse Subs Trademark Applications (Signed Sworn "Declarations") State and Federal since 1994 and those filings were in violation of 18 U.S.C. §1001 and the the Lanham Act - United States Code 15 .
It really makes no difference whether Columbia Firehouse Restaurant and Bar case was "DROPPED” in February 2016 ("Columbia Firehouse trademark opposition dropped by Firehouse Restaurant Group") OR... that their Registration Application was subsequently "ABANDONED" in the TTAB proceeding as mutually agreed because...ALL the Firehouse Subs Trademarks were fraudulently obtained.
No matter how Firehouse Subs Co-Founder, Robin Sorensen in concert with his Lawyer, Richard S, Vermut go about painting a pretty legal picture to the public through media or slick talking Firehouse Subs Franchisees' the entire Trademark Portfolio is "UNENFORCABLE:" under the Lanham Act - United States Code 15.
This Ex-Professional Firefighter can tell you where there is smoke there is indeed something smoldering underneath, at it's core.
"What a tangled web we weave, when first we practice to deceive".
In this follow-up Investigative Article; the Author; "Mr. Rogers" asks the reader...."can you say...Lance Armstrong"?
By William H. Rogers, Jr., Professional Ex-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 Investigative Articles by this Author; LINKED HERE