I am so bummed. I’ve had a small “kitchen table” business for more than a couple of years now and I’ve been told by a friend (who is an attorney) that I can legally use the TM symbol next to my “mark” (it’s a phrase).
I’ve now come across at least six online stores using this exact phrase to describe their product. Anyone who is doing business on the 'net knows to do a Google or Yahoo search for their product/business name and well, the last time I looked, I was number one for this phrase at both Google and Yahoo, so I doubt very much that they just missed it.
Do any of our attorneys here write letters notifying companies that they’re using someone else’s trademark and to Please Stop?
How much can I expect to pay for this service?
Is this a form letter that I can use over and over again? Or do I need to pay an attorney each time I need a letter sent to a different company?
I’m starting to think that maybe I should just move onto something completely different.
Sorry, forgot to mention that. No, didn’t register it with the USPTO (I should, asap) but talked to an attorney who does this kind of work who says that because I’ve used it as long as I have, I can legally put the TM symbol next to my mark, which I’ve done.
Edit: Actually, I read something supporting this online, I think at the USPTO website, then confirmed it with an attorney I know.
I’m not a copyright lawyer, but from what I understand, if you’ve registered the mark, it means you have already established that you own it. Putting a TM next to your mark only shows that you claim that you own it. If one of these other companies challenge you on that, you would have to provide evidence that you’ve come to own it through legitimate use. I don’t know if they’d quit just because you send them a “cease and desist” letter.
I am not an attorney, but trying to stretch my memory back to when I worked in a copyright/trademark law office, seems that TM or ® indicate that you have registered the trade mark with the PTO. I know ® marks have to be registered – can’t remember if the TM is also, but I think so.
Usually claims on trademarks are decided by “first use”. If you can prove that you were using the mark earlier, sometimes you can “win”. Also, it has to be for the same class of goods – that is, you can’t prevent someone from selling “Best One” tires if you’re using “Best One” to sell baby clothes, because there’s no substantial chance of consumer confusion.
The problem with defending or bringing IP suits is that it’s darned expensive, and unless you have the money, you probably won’t get anywhere, especially if your opponent has deeper pockets than you.
Anyone remember when the “Sesame Station” cafe on Longchuan St (next to Shita Road) had to change its name from the former “Sesame Street” (pretty clever name change, IMHO, they were able to keep their sign as “Sesame St.” regardless! ) That was because of pressure from the mark owner. Although I’m not quite sure what overpriced French food has to do with preschool education…but I digress.
I was also using a mark in the US on my handmade glass jewelry, and now some idiot in another state has begun using the same mark. I politely wrote her to ask her to cease and desist as I had been using the mark before her, but all I got back was an extremely rude letter saying she was not going to do anything. The Web site (a MAJOR artists’ site) management and “legal forum” was completely unsympathetic as well (I did not name names but presented the problem as a general one). I didn’t expect them to do anything, but it would have been nice to see them recognize the basic principles of trademarks in the US where the Web site is located. Their idea was “too bad, and anyway how is it hurting you?” The same people are awfully sensitive if you “copy” one of their paintings, of course…
What sort of product are you working with, and what are the competition doing with the mark?
Using the TM symbol next to your mark is a US custom, and all that it signifies is that you are using your mark “as a trademark”.
In the US, you can establish common law rights in your mark, even if you haven’t registered the mark with the USPTO. However, your common law rights to use that mark and to exclude others from using it will be limited to the geographic area where you use the mark. If someone later registers that mark in the USPTO, that person will have exclusive rights to use and to exclude others from using that mark throughout the entire US, except for in the limited geographic area where you have commom law rights in the mark.
Are you certain that your mark (yes, a phrase or slogan generally can function as a mark) can be a mark? That is, is your phrase mark descriptive of the products or services you provide? If it is descriptive of the product or service you provide, it cannot function as a trademark and you would not be able to exclude others from using it. For instance, if you are selling chocolate, you cannot claim exclusive rights to use the word “chocolate”, as “chocolate” is the generic term for processed cocao… and you probably wouldn’t be able to use the term “sweet brown stuff”, as that would be descriptive of chocolate. An example of a good phrase that was registered as a trademark is Coca-Cola’s “Can’t Beat The Feeling” mark. That phrase doesn’t describe cola soft drinks nor is it a generic phrase for cola soft drinks.
Do any of our attorneys here write letters notifying companies that they’re using someone else’s trademark and to Please Stop?[/quote]
We do this all the time. But again, I’m not certain that your mark is a good (registerable) mark and even if it is, not all jurisdictions recognize common law rights. Thus, even if you have been using the mark in Taiwan, but have not registered the same in Taiwan, you have no grounds to exclude others from using the same mark in Taiwan, unless you can demonstrate that your mark is a “well-known” mark. “Coca-Cola” is a “well-known” mark.
Varies. My rate is US$ 200 per hour. I could crank out a warning letter in about 15 minutes. But, would you want to spend even that for something that will probably have no effect whatsoever?
A form letter should suffice.
I don’t know if you need to drop your business. A new mark might be advisable.
[quote=“SCL”]I’m not a copyright lawyer, but from what I understand, if you’ve registered the mark, it means you have already established that you own it. Putting a TM next to your mark only shows that you claim that you own it. If one of these other companies challenge you on that, you would have to provide evidence that you’ve come to own it through legitimate use. I don’t know if they’d quit just because you send them a “cease and desist” letter.
Someone please correct me if I’m wrong.[/quote]
If you have registered a mark, you do not need to use the TM next to it. In the US, trademark owners often use the ® symbol to notice that the mark is registered. The TM symbol merely indicates that the mark is not registered but is being used as a trademark… sometimes, the TM is use to indicate that an application to register the mark has been filed and is pending.
Legitimate use of a mark does not necessarily result in ownership. Common law rights may be obtained via use in a limited geographic area in the US. I would imagine that other nations that have common law traditions might also afford such common law rights.
First use is only important if you are able to claim common law rights or you can demonstrate that your mark is a “well-known” mark.
You are correct, basically, regarding classification. However, as more nations move to protect “well-known” marks, an owner of a “well-known” mark can prevent others from using his mark on or with goods in a different class. For instance, you would be in big trouble if you tried to sell motor oil under the mark “Coca-Cola”. This is because, as the “Coca-Cola” mark is so “well-known”, even if you used it on or with motor oil, there would be a likelihood of confusion among consumers as to the origin of the product. And the standard is less than “substantial”… only a “likelihood” of confusion is necessary to successfully claim infringement.
It depends on the jurisdiction, and of course, the value of your mark. Defending IP rights in Taiwan is a real problem. Nonetheless, big corporations that recognize the value of their marks defend them quite aggressively.
Sesame Street is a well-known mark.
[quote]I was also using a mark in the US on my handmade glass jewelry, and now some idiot in another state has begun using the same mark. I politely wrote her to ask her to cease and desist as I had been using the mark before her, but all I got back was an extremely rude letter saying she was not going to do anything. The Web site (a MAJOR artists’ site) management and “legal forum” was completely unsympathetic as well (I did not name names but presented the problem as a general one). I didn’t expect them to do anything, but it would have been nice to see them recognize the basic principles of trademarks in the US where the Web site is located. Their idea was “too bad, and anyway how is it hurting you?” The same people are awfully sensitive if you “copy” one of their paintings, of course…
That’s because if you didn’t register your mark you had only common law rights to the same and those rights were limited to the geographic location where you actively sold your jewelry. The other person, though I agree a slimeball, obviously knew that you could not legally exclude her from using that mark except in the limited geographic area where you had active sales. She also knew that you would not be willing to spend money on contesting her use of the mark.
That was my quarrel with the woman using my mark…we were selling the identical same product, both via the Internet, both based in the US. Although I must say, I thought my product looked nicer than hers.
[quote=“stragbasher”]Just out of interest, how do you define the geographical area in which you use your mark if you do business on the internet?
Is ‘cyberspace’ your geographical area, or are you limited to your country’s domain, or to your physical location?[/quote]
That’s a tricky question…
First of all, remember that not all jurisdictions allow for common law rights in a mark even if you are using the same. Thus, if a person uses an unregistered mark to sell his goods over the internet and some of his customers are located in a different nation… he still might not get common law rights in that nation.
However, if I am using my mark in the US and I am selling my goods using my mark over the internet to buyers in the US, I should probably be able to claim common law rights in my mark in the areas where my customers are located. But, I think if the issue went to court, the court would look at the number of sales and amount of money involved in each geographic location. I doubt that a single sale to a customer in California would give a seller in New York common law rights to the use of his mark in California.
I admit, however, that I am not certain how this situation would be resolved. This is still an emerging issue in the field of trademark law.
Thanks for all the excellent feedback, everyone, and especially Tigerman. Sharky told me that she talked to you about this recently. I think I’m just going to continue doing what I’m doing until it stops being fun. Your hourly rate is what I estimated but as a few people have cautioned, I guess it’s not worth the time, effort and expense.
How does one register thier mark in the first place. A friend has a bushiban in Taiwan with an orginal name and cartoon character for its logo. Where can he register it. How much would it cost? I don’t think anyone would want to infringe but… it’s thier creation and they’d like to protect it. PS the bushiban name is registered with the education department but I’m not sure if that protects the logo.
Its very simple. The mark should be registered with Taiwan’s Intellectual Property Office (TIPO). The applicant must provide 18 samples of his mark of a size no larger than 5cm x 5 cm and must identify the goods and or services with which the mark will be associated. The filing fees are NT$ 3000 for marks with up to 20 goods or an unlimited number of services identified… NT$ 4000 for marks with up to 40 goods identified… and NT$ 5000 for marks with up to 60 goods identified.
Our firm charges US$ 200 to prepare and file an application for a single mark in a single class… US$ 60 to report on the approval and publication of a mark… and US$ 100 for obtaining the registration certificate and translating it if necessary and advising re use and renewal issues. Of course, we also check to make certain that TIPO did not make any mistakes (TIPO often does make typos). We also charge a fee if the examiner at TIPO has any objections to the mark or to the identification of goods and or services and we report the same to the applicant and fight with TIPO to resolve the matter…
There are numerous trademark firms out there that do nothing but application filing. They would likely be less expensive than we are, but if the application runs in to any obstacles, they will send it on to a law firm to deal with…
This is Taiwan. I see infringement ALL the time.
That’s basically right. The logo would not be protected. However, while the exact name would be protected, anyone else could make a name that was nearly identical. Trademark registration would protect the mark from identical and similar marks/names.
I confess I don’t know what I am talking about. But a ‘cease & desist’ letter often may have the desired effect if the other online businesses are small. Most people will try to avoid un-pleasantries.
If you have a template letter, a copy to the sites web host can also have a dramatic effect. A web host will often pull a site off there servers faster than you can say ‘cease & desist’ if they get any type of legal letter or email saying a site they host is serving copyrighted work to protect their own business. All hosts have an acceptable use policy.
BTW: You can usually find the webhost from the nameserver record, IP address or even from the DNS record.