Tim Pool, Chris Pool, and the Subverse Trademark
by Susan Basko, esq.
Disclaimer: I have had interpersonal dealings with Tim Pool, but do not consider myself biased for or against him in regards to his dealings with his brother, about which I know little. That is not the main topic of this blog post.
Tim Pool, also known as TimCast, and his older brother, Chris Pool, also known as Reactor, have been waging a family feud online. The Brothers Pool, or the Pool Boys, as they might be called, are Tech Bro siblings from Chicago. Tim got his start livestreaming Occupy Wall Street (OWS) and subsequent protests and moved on to reporting and entertaining with his own opinion Youtube channel and Twitter. Chris is known as a tech innovator and content creator. The feud involves Chris accusing Tim and his two business partners of stealing his business, Subverse, out from under him. Chris is making the rounds of Youtube talk shows to give his side of the story. Chris is raising money via gofundme to hire lawyers to sue his brother. Tech geeks and Youtube show hosts are taking sides or remaining neutral while splashing into the deep end with The Pool Boys.
I have thoughts on this whole Pool Boys debacle, but those are not the topic of this article. This article is about the trademark for Subverse, which is part of the intellectual property that Chris says Tim stole from him. That's not even the topic of this article. The topic of this article is the bizarre situation surrounding Tim's application for the trademark on the name, Subverse. This is where we separate the legal geeks from the regular folks, because this is a playground for the legal geeks, especially those with an interest in trademarks.
The saga starts out with Tim Pool, acting on his own without a trademark lawyer, which is always a bad idea, filing a trademark application on the word, "Subverse," on the following categories of services:
IC 041. US 100 101 107. G & S: Entertainment media production services for the internet; Entertainment services, namely, providing online video games; News reporters services; Providing entertainment information via a website.
Note, the services Tim claims are all under category 41, which is entertainment. He is claiming Subverse is a trademark used to identify media production services, video games, news reporting, and entertainment information on a website.
Tim applied to own this Subverse trademark in his own name, not the name of any company, but noted that he does business as Timcast.
He filed the application on April 8, 2019. The application states that the trademark has been in use to identify the services since April 4 of 2015. If I am not mistaken, that would have been when Chris Pool owned and ran Subverse.
That application went along without a hitch, at least for a while. The Trademark Examiner, who is a trademark attorney working for the United States Patent and Trademark Office (USPTO) found no conflicting trademarks. The Examiner sent the trademark for publication in the official gazette, where it would be published for 30 days. During those 30 days, anyone that thought the trademark would infringe upon or conflict with their own or that they would be damaged by it, gets that opportunity to file a letter complaining to the USPTO.
And sure enough, an objection letter came in to the USPTO from a company called Zovolt Limited limited company (ltd.) UNITED KINGDOM 35 Connaught Avenue Great Yarmouth, NOR UNITED KINGDOM NR317LU. Here, we'll call them Zovolt.
Now, let's look at this application from Zovolt. Tim Pool filed his application on April 8, 2019. Zovolt filed its application on August 13, 2019, about 4 months after Tim Pool's application. However, Zovolt claimed it has precedence under 44(e), which is a US Trademark rule that allows applicants to claim they came first if they have a valid foreign trademark registration or application, from a foreign nation that is in treaty with the U.S. Zovolt claimed it had priority date of February 14, 2019, about two months earlier than Tim Pool filed his application. However, Zovolt did not provide the USPTO with a copy of any such registration, as required by the rule. The Zovolt application listed a UK application number, but did not provide a copy of that registration. The USPTO issued an Office Action (letter) on December 1, 2019, telling Zovolt to provide a certified copy of their alleged UK registration. Zovolt has 6 months to respond. That gives Zovolt until June 1, 2020 to respond and provide the certified copy of the UK registration.
NOTE: On the UK IP Office website, I did find an application by Zovolt for a trademark on Subverse dated February 2, 2019, as claimed in the USPTO application. However, that application is only for goods and services in Classes 9 and 42, mainly related to computer programming and computer software, and not for Entertainment, which they added in the US application. The services claimed in the UK application seem significantly different from those claimed in the US application.
The trademark application filed by Zovolt is a huge mess, aside from claiming priority with a foreign application but providing no copy of it. The Zovolt application is made on a 1B basis, which means an "intent to use" basis. This is unlike Tim Pool's application, which is made on a 1A basis, meaning he says he is already providing the three or four services he listed on his application. In contrast, Zovolt says it plans to start providing a whole list of services. Clue in here -- this is how you know when people applying for a trademark have absolutely no clue what they are doing -- the Zovolt application lists dozens of supposed services, many of which are redundant of each other. The USPTO Trademark Examiner sent an Office Action rejecting most of these listings, stating that they were repetitions of each other and needed to be combined. The Office Action gave Zovolt a deadline till June 1 to combine its claimed uses - or the USPTO will do it for them. I will post the list of services Zovolt is claiming -- later below -- because it is so ridiculous and long, it will take up too much space.
When a trademark applicant makes a 1B (intent to use) claim, they get a certain number of months in which to actually start providing those goods or services and using the trademark to identify them. The applicant then must file a Statement of Use (SOI. Failure to file a SOI or ask for an extension of time means the trademark application goes DEAD.
Zovolt filed an Objection when it saw Tim Pool's application go to Publication. Tim Pool's application has thus been suspended until there is a resolution in the Zovolt application. That resolution should come shortly after June 1, 2020, when Zovolt either does or does not file a certified copy of its UK application.
The mystery deepens. The Trademark Examiner working on Tim Pool's application, found no trademarks conflicting with his use of the trademark Subverse. The Trademark Examiner working the Zovolt application, on the other hand, found that Zovolt's use of Subverse would conflict with already existing trademarks on the words “SUBVERT”, “SBVERSL”, and “SUBVERSION”, as well as on Tim Pool's applied-for trademark on "SUBVERSE." All of these existing and applied-for trademarks are on categories of goods and services identical or very similar to some of the hilariously many categories that Zovolt claims it will soon be engaging in.
If Zovolt's trademark on Subverse would conflict with existing trademarks on Subvert, SBVERSL, and Subversion, how was it decided that Tim Pool's use of Subverse did not conflict with those same existing marks? Thus are the mysteries of the USPTO. Maybe the Pool Boy gets the Home Boy advantage or the "He is actually doing these things" advantage.
The application filed for Zovolt is a giant mess. One sign that people have no clue what they are doing in trademark is when they file an application for an excessive number of categories. In this regard, the Zovolt application ought to win an award for most ridiculous application ever. Below are the categories Zovolt claims, all as "intent to use":
Here, (Zovolt) goods and services are identified as follows:
Class 009: 3D animation software;3D computer graphics software; AI software; Animated films; Animation software; Application software for mobile devices; Application software for mobile phones; Application software for smart phones; Application software for social networking services via internet; Artificial intelligence software; Augmented reality software; Augmented reality software for simulation; Augmented reality software for use in mobile devices; Augmented reality software for use in mobile devices for integrating electronic data with real world environments; Communication software for connecting computer network users; Communications software; Computer application software; Computer application software featuring games and gaming; Computer application software for mobile phones; Computer application software for mobile telephones; Computer application software for streaming audio-visual media content via the internet; Computer application software for use with wearable computer devices; Computer e-commerce software to allow users to perform electronic business transactions via a global computer network; Computer game cartridges; Computer game cassettes; Computer game discs; Computer game programmes; Computer game programs; Computer game software; Computer game software, downloadable; Computer game software downloadable from a global computer network; Computer game software for use on mobile and cellular phones; Computer game software for use with on-line interactive games; Computer game software, recorded; Computer games; Computer games entertainment software; Computer games programmes downloaded via the internet; Computer games programmes downloaded via the internet;Computer games programmes for simulating financial securities trading;Computer games programmes;Computer games programs; Computer games programs downloaded via the internet;Computer games programs recorded on tapes;Computer games programs;Computer games software; Computer gaming software; Computer graphics software; Computer programmes for interactive television and for interactive games and/or quizzes; Computer programmes for playing games; Computer programmes stored in digital form; Computer programs for enabling access or entrance control; Computer programs for playing games; Computer programs for pre-recorded games; Computer programs for processing digital music files; Computer programs for the enabling of access or entrance control; Computer programs for using the internet and the worldwide web; Computer programs for video and computer games; Computer software downloadable from the internet; Computer software downloaded from the internet; Computer software for entertainment; Computer software for facilitating payment transactions by electronic means; Computer software for mobile phones; Computer software for the administration of on-line games and gaming; Computer software in the field of electronic publishing; Computer software supplied on the Internet; Computer software that permits games to be played; Computer software to enable the provision of electronic media via the Internet; Covers for digital media players; Covers for smartphones; Covers for sunglasses; Displays for smartphones; Downloadable applications for use with mobile devices; Downloadable computer game programs; Downloadable computer game software; Downloadable computer game software via a global computer network and wireless devices; Downloadable computer games; Downloadable game related software applications; Downloadable interactive entertainment software for playing computer games; Downloadable interactive entertainment software for playing video games; Downloadable software applications; Downloadable video game programs; Downloadable video game software; Electronic game programs; Electronic game software; Electronic game software for handheld electronic devices; Electronic game software for mobile phones; Electronic game software for wireless devices; Electronic publications, downloadable, relating to games and gaming; Encoded smart cards; Entertainment software; File sharing software; Gambling software; Game development software; Game programs for arcade video game machines; Game software; Games cartridges for use with electronic games apparatus; Games software; Games software for use with computers; Games software for use with video game consoles; Gaming software; Gaming software that generates or displays wager outcomes of gaming machines; Head-mounted display apparatus; Head-mounted holographic displays; Head-mounted video display apparatus; Head-mounted video displays; Headsets for virtual reality games; Interactive computer game programs; Interactive entertainment software; Interactive entertainment software for use with computers; Interactive entertainment software for use with personal computers; Interactive game software; Interactive graphics screens; Interactive multimedia computer game program; Interactive multimedia computer game programs; Interactive multimedia computer games programmes; Interactive multimedia game programs; Interactive multimedia software for playing games; Interactive video game programs; Interactive video software; Labels with integrated RFID chips; Labels with machine-readable codes; Laptop bags; Laptop carrying cases; Laptop covers; Laptop sleeves; Machine learning software; Media software; Media streaming software; Mobile apps; Mobile app's; Mobile phone covers
Class 041: Entertainment Services; Organisation of games and competitions; Arranging and conducting of competitions; Electronic desktop publishing; Games equipment rental; Layout services, other than for advertising purposes; Providing online electronic publications, not downloadable; Electronic game services and competitions provided by means of the internet; Organization of electronic game competitions; Providing electronic publications from a global computer network or the Internet, not downloadable; Multimedia publishing; Publication of printed matter in electronic form on the Internet; Publication of printed matter; Video game entertainment services; Provision of online computer games; Publication of computer games; Audio, video and multimedia production, and photography
Class 042: Development of computer hardware for computer games; Design and development of computer game software; Website design services; Website design consultancy; Design, creation, hosting and maintenance of websites for others; Hosting of digital content, namely, on-line journals and blogs; Providing temporary use of non-downloadable computer software for use in the creation and publication of on-line journals and blogs
Further below, you can find the USPTO Office Action (letter) telling Zovolt what replies it must give by June 1, 2020.
FORETELLING THE FUTURE: What is likely to happen? Let's look at different possible scenarios.
If Zovolt DOES NOT file any Response by June 1, its application will go DEAD and Tim Pool's application will proceed. Then, very most likely, Tim Pool will get a trademark on Subverse, notwithstanding that there are supposedly conflicting existing marks on Subvert, SBVRSL, and Subversion. If that topic does come up as a new Office Action with a denial, Tim can file a Response in which he seeks to differentiate the words or the uses.
If Zovolt DOES file a Response to the Office Action by June 1, we assume that Response will contain a certified copy of a prior-filed UK trademark registration. If that happens, then Zovolt's application will be considered first in line before Tim Pool's application. Zovolt will still need to consolidate its listings of goods and services. Zovolt will also have to differentiate its trademark and uses from those already in use by the owners of the trademarks on SBVRSL, Subvert, and Subversion. And then -- the biggest challenge of all -- Zovolt will need to start actually providing the goods and services it is claiming it plans to provide -- and file a Statement of Use SOI with the USPTO. Assuming that Zovolt actually has a UK prior application, and assuming Zovolt can differentiate its trademark and uses from those existing, then Zovolt will have about 18 months from the date of its initial application to be able to prove it is providing that long list of goods and services shown above. Zovolt's application was filed on August 13, 2019, which would give them till about February of 2021 to start running all those services and file a Statement of Use.
Thus, it is possible that Tim Pool's trademark application could be suspended until February 2021. At that time, if Zovolt is actually providing all the services it claims it will, Tim Pool will most likely be shit out of luck, which is the legal term used by lawyers and professionals.
On the other hand, if Zovolt fails to Respond to the Office Action by Jun 1, 2020, then Zovolt is up a creek without a paddle and Tim Pool will most likely get his trademark. And if that happens, THEN what happens? Why, Tim Pool and Chris Pool can battle it out in a feud to rival the Hatfields and McCoys, or they can embrace in brotherly love and divvy things up in a more rational way.
Whichever way this goes, the Summer of 2020 will be one to watch The Pool Boys and see how they resolve this situation. By the way, if you've never seen the movie, "The Social Network," right now might be a good time to watch it as a primer in how easily business ownership in a tech business can be created.
NOTE: I don't know what the trouble is with this document on Scribd. It is set to Public, and it is supposed to be downloadable and cut and paste. The full document has been uploaded. It is a publicly-available government document. I'll see if I can re-upload it or figure out what the problem is.