Question

Topic: Copywriting

Trademark Question

Posted by Anonymous on 9/9/2008 at 1:40 PM ET 500 Points
My company owns a trademark and, although I won't list it her because that would probably cause MarketingProfs' page to list at the top of search engine results, I can provide the following link to the USPTO: uspto dot gov, ref trademark # 77071125 .

Basically, a competing company recently started using our trademark in connection with one of their new products. They call their new product the _________ email service.

When we contacted them about the issue, they stated that they are marketing their product under that name as a "descriptive use" and not as a trademark use.

I know this issue comes up with online marketers frequently so I feel this is an appropriate forum.

I've asked several attorneys but want a non-legal opinion.

Thanks in advance.

-Gary
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RESPONSES

  • Posted by Inbox_Interactive on 9/9/2008 at 1:45 PM Member
    At the risk of being less than helpful, why do you want a non-legal opinion?

    Sounds like they've researched it, now you have to decide if you plan to do anything about it.

    It doesn't sound like the way they're using it has anything to do with the way you trademarked it.

    Do you think you've been damaged, injured by their use?

  • Posted by CarolBlaha on 9/9/2008 at 1:52 PM Accepted
    It confuses consumers. And yes, you can sue. Here is an article for you. https://www.kramerslaw.com/trademark_law.htm
  • Posted by Peter (henna gaijin) on 9/9/2008 at 1:58 PM Member
    I agree with CarolBlaha - it is likely to confuse consumers. There is a chance that your term could fall under descriptive use, but that seems kind of slim.
  • Posted by Inbox_Interactive on 9/9/2008 at 2:16 PM Member
    I said going into it that my response would be less than helpful. I just wanted to know what weight a marketer's opinion had over an attorney's.

    People are all too often convinced that they have a case against someone, then they rush out and try to sue someone without getting their ducks in a row. And many times, in the end, all they have to show for their efforts is a big fat legal bill, with no "justice" having been served.

    You said you've asked several attorneys, which leads me to think that they're not giving you the answer you want to hear (although I'm sure they will still take your money to represent you).

    It would be interesting and educational, at least for me, to know what these attorneys have told you so far.

    - Paul
  • Posted by CarolBlaha on 9/9/2008 at 2:53 PM Member
    Your first step is an order to "cease and desist". A colleague of mine had a similar case using a phrase from Sesame St, even a big group like that went there first-- he desisted (after some arguing -- he wasn't even in a related biz but he was using it in a less than wholesome way) and that was the end of it. Emotions aside, the goal is to have them stop.

    Determining damages is difficult but not impossible. Argue they got sales from the usage. Start with a big number, supena their sales records during time they used it, and go from there. The end settlement will probably be negotiated out of court.
  • Posted by Inbox_Interactive on 9/9/2008 at 3:08 PM Member
    With all due respect, your first step is not to go firing off a cease and desist letter.

    Your first step is to hire an attorney.

    I'm no trademark expert, but it seems that you're still in the middle of a battle with USPTO as far as not abandoning the mark, aren't you?

    Then there's the First Alert matter (deep pocket there), and it looks like you might have limited yourself to a certain color scheme, too.

    In addition, it looks like you were planning to use the mark only for a certain kind of service, although I know you're interested in getting a much broader mark.

    Choose an attorney. And remember that free advice (especially legal advice) is usually worth twice what you pay for it.
  • Posted by Frank Hurtte on 9/9/2008 at 3:30 PM Member
    If you dont defend it you will loose it.

    Here is an example.

    Allen-Bradley (now owned by Rockwell Automation) had a trademarked product called the PLC back in the 70's they didnt protect it... now its a generic term.

    Frank Hurtte
  • Posted by CarolBlaha on 9/9/2008 at 4:16 PM Member
    I totally agree even sending a c&D letter should not be done without out lawyer. Just because my post didn't specifically spell it out doesn't mean I was implying that-- it only means I wasn't stating the obvious.
  • Posted by Jay Hamilton-Roth on 9/9/2008 at 8:08 PM Member
    It doesn't matter what we non-lawyers think, since this is an issue for the courts. You need to decide if it's worth your money and time to protect your trademark (and figure the likelihood of collecting from the company).
  • Posted by matthewmnex on 9/12/2008 at 12:23 AM Member
    This is a very very simple issue.

    You own ConnectUS (one word)

    If they are using it as one word. SUE them immediately.

    If they are simply saying 'connect us' as a descriptive. Then you don't have a leg to stand on :)

    Sorry, if it is the latter then don't waste your time and money trying to sure :)

    Good luck.
  • Posted on 9/12/2008 at 3:38 PM Member
    It's quite clear that their use of the word is one word and not in a descriptive sense. It is very clear that it is the name of their service. Sue.
  • Posted on 9/14/2008 at 3:35 PM Member
    Gary - this is a legal 'copyright' question, not a 'copywriter' question. You need a legal forum and luckily, there are some good ones out there.

    In this forum, we know how to sell (hopefully) but with your kind of query it is vital to get clear and pertinent advice.

    It's best to get that advice before you approach the other party because then your legal firm will defend to the death their advice to you.

    Go here to see more:

    https://www.out-law.com

    That is a great legal site and forum and they have all kinds of precedents for cases like yours.

    Hope it goes well!

    Peter
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