Legal question - Tilted Forum Project Discussion Community

highthief · 07-07-2004, 04:42 AM

If there are any legal eagles out there....

Our company has a name trademarked for a certain product and has been using that name for years.

Last month, our only real competitor renamed one of their products (that does the same thing ours does, and competes in the exact same market) something so close to our product name as to be very confusing.

To use an example, say you started marketing a product called "Coca-Cola-Cola" - that's how close the name is.

Are our competitors infringing on trademark with a name of a product so close to ours?

shakran · 07-07-2004, 05:01 AM

probably but we need more details. Who do you work for and what is the name of the product?

The reason I can't be 100% sure is that you may have a product name that has fallen into common useage. Thermos lost a lawsuit based on that concept several years back, in which some other vaccum bottle manufacturer called it a thermos. The court found that since "thermos" had entered the language to the extent that it had replaced "vaccum bottle" as a description, that their trademark was null and void. I seem to recall a similar situation with Kleenex, although most other companies still call their kleenexes "facial tissues."

If, however, you're talking about something like "Fender" guitars, the other company would be in violation because "fender" has not entered the language as a common synonym for "guitar."

rakshasa · 07-07-2004, 07:48 AM

If your company is a real, viable company with a bunch of employees, it is already time for you to consult an Intellectual Property attorney about this case. You may get useful advice here but it's well worth your while to pay for the real thing. The attorney should be able to figure out pretty quickly whether you have a trademark infringement case.

That said, your name is most protected if it has no obvious connection to your product, for instance if your product is a lawn sprinkler called "Hugh's Lawn-Bee". There's a continuum with very arbitrary names at the most protected end, and very generic or descriptive names, such as "The Patented Lawn Sprinkler System" at the least protected end.

But get a lawyer.

highthief · 07-07-2004, 04:14 PM

Oh yeah, the lawyers are active already - unfortunately they sometimes just tend to say what you want them to say. It's like:

Me: "Hey! Counsel guy... those bastards across the street can't do this can they?"

Lawyer: "No, absolutely not. No way! We'll send them a $1000 letter right away.... ah, what was the question again?"

So I thought I'd see about a free second opinion!

Gracias!

07-07-2004, 04:42 AM	#1 (permalink)
highthief Junkie Location: Ontario, Canada	Legal question If there are any legal eagles out there.... Our company has a name trademarked for a certain product and has been using that name for years. Last month, our only real competitor renamed one of their products (that does the same thing ours does, and competes in the exact same market) something so close to our product name as to be very confusing. To use an example, say you started marketing a product called "Coca-Cola-Cola" - that's how close the name is. Are our competitors infringing on trademark with a name of a product so close to ours?

07-07-2004, 04:14 PM	#4 (permalink)
highthief Junkie Location: Ontario, Canada	Oh yeah, the lawyers are active already - unfortunately they sometimes just tend to say what you want them to say. It's like: Me: "Hey! Counsel guy... those bastards across the street can't do this can they?" Lawyer: "No, absolutely not. No way! We'll send them a $1000 letter right away.... ah, what was the question again?" So I thought I'd see about a free second opinion! Gracias! __________________ Si vis pacem parabellum.

07-07-2004, 05:01 AM	#2 (permalink)
shakran Tone.	probably but we need more details. Who do you work for and what is the name of the product? The reason I can't be 100% sure is that you may have a product name that has fallen into common useage. Thermos lost a lawsuit based on that concept several years back, in which some other vaccum bottle manufacturer called it a thermos. The court found that since "thermos" had entered the language to the extent that it had replaced "vaccum bottle" as a description, that their trademark was null and void. I seem to recall a similar situation with Kleenex, although most other companies still call their kleenexes "facial tissues." If, however, you're talking about something like "Fender" guitars, the other company would be in violation because "fender" has not entered the language as a common synonym for "guitar."

07-07-2004, 07:48 AM	#3 (permalink)
rakshasa Upright	If your company is a real, viable company with a bunch of employees, it is already time for you to consult an Intellectual Property attorney about this case. You may get useful advice here but it's well worth your while to pay for the real thing. The attorney should be able to figure out pretty quickly whether you have a trademark infringement case. That said, your name is most protected if it has no obvious connection to your product, for instance if your product is a lawn sprinkler called "Hugh's Lawn-Bee". There's a continuum with very arbitrary names at the most protected end, and very generic or descriptive names, such as "The Patented Lawn Sprinkler System" at the least protected end. But get a lawyer.