• So You Can Tack — Now What?

    by  • February 22, 2022 • trademark • 0 Comments

    It’s not unusual for those involved in charitable work to have trademark ownership issues. I suspect it is because the organizations are largely volunteer-driven without, at least at first, any formal business organization or structure. They are also often ideologically driven, which means that different views on the group’s direction will cause a schism.

    In Breaking Code Silence v. Papciak we don’t know what caused the falling out, it is only apparent there was one. There are two trademark applications of unknown relationship; one application lists as co-owners Chelsea R. Papciak, Jennifer Walker, Jenna Bulis, Emily Carter, and Rebecca Moorman. On the other, the owner was originally identified as Breaking Code Silence, Inc., a California corporation, later amended to Breaking Code Silence (no “Inc.”), a California “public benefit corporation.” The applications are largely for the same services surrounding institutional child abuse. The application filed by the individuals was filed on September 24, 2020 and claimed a first use date of November 26, 2019. The application filed by BCS was filed on May 5, 2021 and claimed a first use date of December 11, 2019. Both applications use the same specimen. There is also a declaration filed with a petition to revive the group application that might illuminate the situation, although I can’t make head or tails of.

    In the lawsuit, BSM claimed that an unnamed volunteer started using the trademark BREAKING CODE SILENCE in October 2010 with books, blogs, posts, and speaking engagements aimed at helping survivors of institutional child abuse. In 2019 “a group of survivors of troubled teen residential facilities joined together to formalize BCS as an organization” and in 2021 the legal entity Breaking Code Silence was formed. BCS alleges that

    Chelsea Papciak (also known as Chelsea Filer), Jennifer Walker, Jenna Bulis, and Martha Thompson “were involved with BCS from 2019 through early 2021.” In early 2021, “these Defendants publicly separated themselves from BCS and no longer actively participate in the organization.” However, these Defendants are using the BREAKING CODE SILENCE mark without Plaintiff BCS’s permission, including through Defendants Filer and Bulis representing themselves as officers at Breaking Code Silence.

    In addition, “Defendants have taken many of Plaintiff’s social media and email accounts and are holding them hostage and will not return them to Plaintiff despite numerous requests.” In April 2021, Defendants Bulis and Filer “filed a registration for a Florida Profit Corporation by the name of BREAKINGCODESILENCE INC.”–which is the final named Defendant. “This was done without the authorization of BCS, and after publicly falsely accusing BCS (a nonprofit) of attempting to profit from the troubled teen survivor movement.” Defendants also “continue to make public posts on social media alleging that Plaintiff is committing theft, bullying, and threatening survivors,” which “are causing the public to question Plaintiff’s integrity.”

    BCS therefore sued Chelsea Papciak Filer, Jennifer Walker, Jenna Bulis, Martha Johnson (not one of the trademark applicants) and BreakingCodeSilence, Inc. for trademark infringement.

    BCS had a problem, though; namely whether it owned a trademark for BREAKING CODE SILENCE. BCS claimed to have trademark rights originating in 2010, when the term was first used in a trademark way by a volunteer.1 But BCS hadn’t demonstrated that it was the successor to those rights:

    BCS does not plausibly allege that it is the owner of the mark through its own use. It does not claim to be the first one to commercially use the mark in the relevant market. As mentioned, BCS alleges an individual first used the mark in 2010 for “books, blogs, posts, and speaking engagements,” but BCS was not incorporated until 2021. And although an individual “volunteer of BCS” may have rights to the mark, BCS is a separate entity. Ordinarily, a corporation is regarded as a legal entity separate and distinct from its stockholders, officers and directors. Hence, additional facts are needed to show BCS owns the unregistered mark.

    To that end, BCS alleges the common law trademark rights stemming from 2010 “have been assigned to BCS.” Defendants argue this assignment allegation is a legal conclusion that is insufficient under Rule 12(b)(6). The Court agrees. The term “assignment” has a specific legal meaning, especially in the trademark context. The Complaint does not allege who transferred the rights to BCS, the date of the assignment, the scope of the assignment, or any other information. Without any supporting factual allegations, BCS does not plausibly allege it owns the unregistered mark through an assignment, which would give it the right to preclude Defendants’ alleged junior use.

    BCS was given leave to amend its complaint to correct the deficiency.

    That was an expedient resolution for the court, but identifying a predecessor-in-interest isn’t going to get the court any closer to figuring out who the owner is. Whether or not there is a chain of title going back to 2010, in 2019 there were individuals all acting collectively as BREAKING CODE SILENCE but who subsequently had a falling out. The correct question is which of two competing claimants owns the same trademark? Tacking back to 2010 doesn’t really help to solve who the rightful owner is now.

    The group application has a filing date prior to the public benefit corporation application and the latter has been refused registration based on the former. Even if the court evades deciding the fundamental question, it will just be punted to the Trademark Trial and Appeal Board instead, perhaps then again to the trial court in Papciak v. Breaking Code Silence.

    Breaking Code Silence v. Papciak, No. 21-cv-00918-BAS-DEB (S.D. Cal. Feb. 11, 2022)

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    1. In an affidavit filed in the case, the individual authenticated a Facebook post where he said that he was misled about whether he had used Breaking Code Silence as a trademark, distancing himself from the lawsuit and the plaintiff. 
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