7 ms·

One of the issues in TM law is that if you don't defend it, folks can claim you're not using it. Leads to perverse outcomes at times, especially in orgs big en

One of the issues in TM law is that if you don't defend it, folks can claim you're not using it. Leads to perverse outcomes at times, especially in orgs big enough to have folks full time employed looking at such matters. [Edit: I'm not saying this is good. Yes, cooler heads should prevail. I'm explaining what can lead it to occurring when it seems nonsensical.]

jonny_eh 3y ago
There is a limit though. Always consider "how would this look in front of a judge". There should be a cost paid for being overly litigious in this regard.
- unyttigfjelltol 3y ago
  It's more like Xerox probably sort of liked that people viewed them as interchangeable with the act of photocopying, but eventually this had textbook consequences for their ability to prevent people from using their name for things they didn't like. I personally would have suggested offering you a license to use the web address, but for whatever reason that ilk of lawyers prefer antisocial methodologies.
  - Dylan16807 3y ago
    > eventually this had textbook consequences for their ability to prevent people from using their name for things they didn't like Like what? I've never heard of such a use.
    - zinekeller 3y ago
      https://en.wikipedia.org/wiki/Generic_trademark https://en.wikipedia.org/wiki/Generic_trademark Xerox was eventually successful (at least in US), but there are cases like Bayer's Aspirin (surprise!) that were genericized.
      - bombcar 3y ago
        Bayer didn’t seem all that concerned with defending Heroin™.
      - User23 3y ago
        The Aspirin and Heroin trademark revocations were punitive and due to the war, not due to lack of proper defense. That’s why you will see non-Bayer acetylsalicylic acid literally marketed as “Aspirin” but even though the Kleenex trademark is considerably weakened, you still don’t see competitors openly labeling their products with the name.
    - unyttigfjelltol 3y ago
      Ok, looks like Xerox pulled their mark back from being merely "generic".[1] [1] https://www.justia.com/intellectual-property/trademarks/strength-of-marks/generic-terms/ https://www.justia.com/intellectual-property/trademarks/stre...
    - maicro 3y ago
      "Hey, can you xerox me a few copies of this document real quick? Yeah, just use the Canon all-in-one on my desk." Little clunky, but I'm certain it's been said somewhere/somewhen.
      - Dylan16807 3y ago
        Is that enough to qualify as "things they didn't like"? I was thinking something actually distasteful.
        jonny_eh 3y ago
        Or a case where someone goes to a store to buy a "Xerox machine" and is sold a Canon? I can't imagine it.
jasonladuke0311 3y ago
Give the history between the assumed parties, I doubt founder would be trying to take that domain name. He lost a lot in court already
SOLAR_FIELDS 3y ago
There are polite ways to go about enforcing this though. The Jack Daniel’s incident comes to mind: https://mashable.com/archive/jack-daniels-trademark-letter https://mashable.com/archive/jack-daniels-trademark-letter
- vlovich123 3y ago
  Isn’t the trademark unenforceable in that case because Jack Daniel’s the drink and the book are in totally different markets and trademarks only apply if you’re competing in the same space.
  - CPLX 3y ago
    You’re making the almost certainly false assumption that Jack Daniels doesn’t have a long history of publishing printed material with this design that well predates this author, including books.
    - justinclift 3y ago
      Is that published material stuff that's for sale, or are you meaning flyers, adverts and that kind of thing?
  - danielheath 3y ago
    A judge would likely decide that, sure. After you've engaged $$$ representation and wasted months of your time defending it.
    - lelanthran 3y ago
      > A judge would likely decide that, sure. After you've engaged $$$ representation and wasted months of your time defending it. For stupid things like this, where the stakes are so low[1], I'd be tempted to represent myself[2]. It'll still cost me hours to appear in court, but it will be much less money than if I paid a lawyer and it will cost me a lot less than the other party[3]. TBH, every person of average intelligence should be taught the basics of defending a claim in their jurisdiction: what steps are involved, what paperwork to file at each step, where to file it, what deadlines there are, how to request extensions for deadlines, what constitutes evidence, how to get written testimonies under oath, etc.[4] These things are not hard, and for low-stakes things there's a greater expected value in taking the gamble on self-representation than in hiring an attorney. Much of the time, for low-value claims, you can simply show up and request that the matter be moved to small-claims court[5]. Most courts actually would prefer to move a suit for $1k to a small claims court. [1] Where the product made a total of maybe $1k, the damages are going to be under $100, and that's maybe too high too, because losing this would mean changing the game's name (or even only the font in the title), which is going to be cheaper than even 2 hours of an attorneys time. The only real danger is cost orders against the defendant, but these are a) rare, and b) decided by the court, using the context of what both parties spent. You aren't going to represent yourself and get hit with a cost order for $100k. [2] I'm not a lawyer and I'm not in the US, but I've represented myself multiple times for things that were much less obvious, and defended all successfully. Courts aren't stupid; all you see in the news when courts make stupid decisions are the outliers. You don't see the thousands of sensible decisions a judge made each month. [3] So it'll be an expensive lesson for Monster if they decide to drag it out. I'll lose billable hours for myself. They'll lose money and goodwill. [4] I found, in my district, that the court is very patient with any person defending themselves and would take the time to explain all of the above even in session, and adjourn for the defendant to perform all the steps that were explained. [5] Small claims don't usually handle trademark infringement claims, though, so not in this particular case.

jonny_eh 3y ago

There is a limit though. Always consider "how would this look in front of a judge". There should be a cost paid for being overly litigious in this regard.

unyttigfjelltol 3y ago
It's more like Xerox probably sort of liked that people viewed them as interchangeable with the act of photocopying, but eventually this had textbook consequences for their ability to prevent people from using their name for things they didn't like. I personally would have suggested offering you a license to use the web address, but for whatever reason that ilk of lawyers prefer antisocial methodologies.
- Dylan16807 3y ago
  > eventually this had textbook consequences for their ability to prevent people from using their name for things they didn't like Like what? I've never heard of such a use.
  - zinekeller 3y ago
    https://en.wikipedia.org/wiki/Generic_trademark https://en.wikipedia.org/wiki/Generic_trademark Xerox was eventually successful (at least in US), but there are cases like Bayer's Aspirin (surprise!) that were genericized.
    - bombcar 3y ago
      Bayer didn’t seem all that concerned with defending Heroin™.
    - User23 3y ago
      The Aspirin and Heroin trademark revocations were punitive and due to the war, not due to lack of proper defense. That’s why you will see non-Bayer acetylsalicylic acid literally marketed as “Aspirin” but even though the Kleenex trademark is considerably weakened, you still don’t see competitors openly labeling their products with the name.
  - unyttigfjelltol 3y ago
    Ok, looks like Xerox pulled their mark back from being merely "generic".[1] [1] https://www.justia.com/intellectual-property/trademarks/strength-of-marks/generic-terms/ https://www.justia.com/intellectual-property/trademarks/stre...
  - maicro 3y ago
    "Hey, can you xerox me a few copies of this document real quick? Yeah, just use the Canon all-in-one on my desk." Little clunky, but I'm certain it's been said somewhere/somewhen.
    - Dylan16807 3y ago
      Is that enough to qualify as "things they didn't like"? I was thinking something actually distasteful.
      - jonny_eh 3y ago
        Or a case where someone goes to a store to buy a "Xerox machine" and is sold a Canon? I can't imagine it.

jasonladuke0311 3y ago

Give the history between the assumed parties, I doubt founder would be trying to take that domain name. He lost a lot in court already

SOLAR_FIELDS 3y ago

There are polite ways to go about enforcing this though. The Jack Daniel’s incident comes to mind: https://mashable.com/archive/jack-daniels-trademark-letter https://mashable.com/archive/jack-daniels-trademark-letter

vlovich123 3y ago
Isn’t the trademark unenforceable in that case because Jack Daniel’s the drink and the book are in totally different markets and trademarks only apply if you’re competing in the same space.
- CPLX 3y ago
  You’re making the almost certainly false assumption that Jack Daniels doesn’t have a long history of publishing printed material with this design that well predates this author, including books.
  - justinclift 3y ago
    Is that published material stuff that's for sale, or are you meaning flyers, adverts and that kind of thing?
- danielheath 3y ago
  A judge would likely decide that, sure. After you've engaged $$$ representation and wasted months of your time defending it.
  - lelanthran 3y ago
    > A judge would likely decide that, sure. After you've engaged $$$ representation and wasted months of your time defending it. For stupid things like this, where the stakes are so low[1], I'd be tempted to represent myself[2]. It'll still cost me hours to appear in court, but it will be much less money than if I paid a lawyer and it will cost me a lot less than the other party[3]. TBH, every person of average intelligence should be taught the basics of defending a claim in their jurisdiction: what steps are involved, what paperwork to file at each step, where to file it, what deadlines there are, how to request extensions for deadlines, what constitutes evidence, how to get written testimonies under oath, etc.[4] These things are not hard, and for low-stakes things there's a greater expected value in taking the gamble on self-representation than in hiring an attorney. Much of the time, for low-value claims, you can simply show up and request that the matter be moved to small-claims court[5]. Most courts actually would prefer to move a suit for $1k to a small claims court. [1] Where the product made a total of maybe $1k, the damages are going to be under $100, and that's maybe too high too, because losing this would mean changing the game's name (or even only the font in the title), which is going to be cheaper than even 2 hours of an attorneys time. The only real danger is cost orders against the defendant, but these are a) rare, and b) decided by the court, using the context of what both parties spent. You aren't going to represent yourself and get hit with a cost order for $100k. [2] I'm not a lawyer and I'm not in the US, but I've represented myself multiple times for things that were much less obvious, and defended all successfully. Courts aren't stupid; all you see in the news when courts make stupid decisions are the outliers. You don't see the thousands of sensible decisions a judge made each month. [3] So it'll be an expensive lesson for Monster if they decide to drag it out. I'll lose billable hours for myself. They'll lose money and goodwill. [4] I found, in my district, that the court is very patient with any person defending themselves and would take the time to explain all of the above even in session, and adjourn for the defendant to perform all the steps that were explained. [5] Small claims don't usually handle trademark infringement claims, though, so not in this particular case.