Maker of ‘iTrump’ Trumpet App Silences Trump in Trademark FightBy
Representing self, Tom Scharfeld withstood Trump legal assault
Spoonjack owner’s six-year struggle to offer musical game
The owner of Trump Tower, Trump Golf Links, and The Donald J. Trump Signature Collection can’t claim this one as his own: iTrump.
That’s because the trademark resides with a 40-year-old-engineer and amateur musician who created an iPhone app designed to teach people how to play the trumpet. This month, Tom Scharfeld prevailed in his grueling six-year legal fight against Donald Trump. And Scharfeld’s triumph is even more impressive because he succeeded without a lawyer.
Legal experts say it’s no surprise that Trump waged a fierce campaign to capture a name that he said screams DONALD TRUMP. After all, The Trump Organization has affixed the moniker to everything from real estate, vodka and golf courses to an airline, clothing and steaks. Long before Trump embarked on his run for the White House, the tycoon had sued to block upstarts from using the name, and he and his family have recently expanded their marks around the world.
“When you are representing yourself, it is almost impossible to win, so coming out a winner is one of the great long shots," said Harley Lewin, a New York lawyer not involved in the case. “Even if you are bright and perhaps right on the issues, the lack of knowledge of litigation procedure almost dooms you from the start."
Trump’s lawyers "didn’t seem to respect that I could do this," Scharfeld said. “We won all the claims and defeated those against us.”
James Weinberger, the lawyer for Trump in the iTrump case, declined to comment.
The president may face other setbacks. By capturing the White House and boosting his global footprint, more people could be tempted to trade on the Trump name, which may spur more challenges by his lawyers, said Megan Bannigan, a New York trademark attorney. The U.S. Patent and Trademark Office’s website already lists scores of applications from non-Trump affiliated businesses and individuals for marks bearing the Trump name, including Trumpbusters, Trump You, Teflon Trump and, simply, Trump.
"The test ultimately comes down to, are consumers going to get confused?" Bannigan said.
Scharfeld, who played in jazz ensembles while in college at MIT, is the founder of San Francisco-based Spoonjack LLC, a one-person firm that developed iTrump and iBone, which teaches the trombone. A lifelong trombone player, he wanted to design an intuitive and playable simulation of the instruments for the iPhone.
And he wanted the music apps to have catchy names. In December 2010, he filed to register the iTrump mark. The apps, which are available in the iTunes Store for $2.99, feature a picture of the instruments and keys to play various notes, either solo or along with recorded music.
About a month later, he was stunned to receive a letter from Trump’s lawyers demanding that he immediately rename his product. They said his use of the name diluted the quality of “the famous” Trump mark and tarnished “the goodwill and reputation that Mr. Trump has built over the years” from his books and reality television show, “The Apprentice.”
Scharfeld refused, and Trump and the Trump Organization challenged his mark before the trademark board. Scharfeld dug in because he said Trump’s lawyers were “100 percent wrong -- the word trump has other meanings." He pushed hard to prove that his trumpet application had nothing to do with Trump and wouldn’t cause confusion.
Scharfeld spent months researching the trademark process online and at a local law library. He read books about trademark law and a manual on the government’s website. He looked at old filings to be able to file documents in the correct style.
"I was just trying to respect the process," Scharfeld said. "I just wanted to be treated fairly."
At times, Trump evaded Scharfeld’s demands for documents while at other instances Trump inundated him with records, he said. Trump’s lawyers sent him thousands of pages of documents, burying him in paperwork.
“They wanted to provide as little information as they could,” he said. “They just wanted to waste my time and disrupt my business.”
U.S. trademarks are designed to help consumers sift through product offerings and recognize brand names. One way to challenge the validity of a trademark is to show a word’s common usage. Scharfeld told Trump’s lawyers that Merriam-Webster’s lists “trump” as a substitute for trumpet and mentions it was used as such in the Bible.
Scharfeld noted that his app, unlike Trump’s businesses, focused on music education. And he sought to show that Trump wasn’t using trademarks relevant to the fight in the way he claimed or at all. He prevailed in an early round, when the trademark office issued a ruling in 2013 that prompted Trump to drop his opposition to the iTrump mark.
Scharfeld also went on the attack, eventually winning rulings that canceled some of Trump’s trademark registrations and forced him to withdraw another. The latest decision came last week, essentially ending the legal battle.
It doesn’t surprise Lewin that Trump initially targeted the iTrump mark, especially since companies have a legal duty to protect their trademarks.
“His counsel in all likelihood has a pretty standing order: Don’t bend,” Lewin said.
The fight has taken its toll on Scharfeld. He said he’s been unable to market the app in the way he wanted, but now he can focus.
“I have people who use it for fun, and I have people who use it as a tool,” he said. “They’re still selling.”
— With assistance by Susan Decker