November 5, 2015
Today in a pre-trial ruling a federal court in California cancelled the
trademark for “urban homesteading” which its owner had used to disable a
number of Facebook pages in 2011 by claiming infringement. This ended a
nearly five-year legal struggle by a small farmers’ market in Denver,
Colorado named Denver Urban Homesteading to cancel the trademark which began
when the farmers lost their Facebook page and contacts with customers in
trademark was owned by the Dervaes Institute of Pasadena, CA, self-described
incorporation papers as a “religious society” and operated by Jules Dervaes
and members of his family. After Facebook pages around the country
February 14, 2011, the urban homesteading community united in
protest against the Dervaes Institute, starting two new Facebook pages and a
petition on change.org demanding cancellation of the trademark. Court
filings show that the Dervaes Institute had issued cease and desist letters
to book authors, book publishers, farmers’ markets and even a public
2011 Denver Urban Homesteading began legal action at the U.S. Patent and
Trademark Office to cancel the trademark. According to owner James Bertini,
the USPTO refused to consider the merits, even though it was obligated to
hold a single hearing and cancel the trademark quickly because it was listed
on the “supplemental register” rather than on the more common “principal
register.” The Electronic Frontier Foundation (EFF) fared no better.
Bertini said that they commenced legal action at the USPTO to cancel the
Dervaes Institute’s trademark for “urban homestead,” as well as for “urban
homesteading” but couldn’t get that agency to decide their case, either.
2013 the farmers’ market sued to cancel the trademark in Colorado federal
court, but after another delay - this time of one year - the judge refused
to consider the case for jurisdictional reasons. So in December 2014 Denver
Urban Homesteading sued in
where a judge in the U.S. District Court for the Central District of
California canceled the trademark because it is generic. Generic words and
phrases cannot be registered as trademarks. The case number is 2:14−cv−09216.
Denver Urban Homesteading was unable to afford a trademark lawyer so owner
James Bertini, a retired general practice attorney represented the market
himself. He was motivated to cancel the trademark not only to get back the
farmers’ Facebook page but also as a matter of public interest since other
Facebook pages had been disabled. Bertini said that he prevailed over five
law firms and nearly a dozen intellectual property litigation attorneys that
participated on behalf of the Dervaes Institute in those legal battles. “No
small business should have to go through five years of litigation to cancel
a trademark that shouldn’t exist,” Bertini said. “A small business cannot
afford this burden.” Indeed, according to Bertini, his didn’t, and the
farmers’ market was closed this year due to the extensive time required for
litigation and travel to California for court-required meetings.
Bertini said that his research shows that this is the first time a trademark
on the supplemental register was cancelled in a pre-trial order. However,
he still has to go to trial in December to obtain damages. He needs to find
an attorney licensed in California who can be associated with him in order
to complete the case.
CLICK HERE TO READ
THE JUDGE'S DECISION CANCELING THE TRADEMARK.
here later. More details about the aftermath of this litigation will be
posted on this website.
here to go to our Facebook litigation page where you can get updates if you
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