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Is Trademark monitoring really nessecary?


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13 replies to this topic

#1 of 14 DeathStar1

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Posted May 08 2006 - 07:22 AM

When I registered my trademark for my comic book name to the feds, I got an email message. It stated >>Policing trademarks is important — failure to adequately police infringing and diluting uses by others may lead to loss of rights, both against a particular infringer and possibly all others.>>

It recomended a 75$ a year service that would run 24/7/365 and patrol the internet for you, looking for people who are violating your trademark. I've had the site bookmarked, but is it really worth signing up for such a service?

just curious if anyone else hear did, and did it make it worth it?

#2 of 14 MarkHastings

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Posted May 08 2006 - 08:08 AM

Quote:
diluting uses by others may lead to loss of rights
Really? Damn! That's pretty scary to think, that enough people steal it, it's no longer yours??? Wow!

What's the site (that you bookmarked)?

#3 of 14 nolesrule

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Posted May 08 2006 - 08:15 AM

Paying for the service isn't necessary, but actively defending your trademark is if you want to keep it. Otherwise, when someone violates your trademark down the road and you go after them, they can point to an instance where you did not defend the trademark and a court could rule that you abandonded it at some point in the past.

I had an issue where a guy (a kid, really) wanted to do a site about arena football and registered the domain arenazone.net without checking that my Arena Football website has a weekly internet radio show called ArenaZone that has been around since 1998. The funny thing is when he announced his site, it was regular people who first pointed out to him he needed to change the name, not me.

I submitted a trademark registration application for ARENAZONE and for my site's name ARENAFAN about 2 months ago because of that issue, and I get snail mail at least once a week about signing up for trademark protection services.

So, here's the disclaimer for my trademarks... ARENAFAN™ and ARENAZONE™ are trademarks of ArenaFan, Inc. and may not be used without permission.

#4 of 14 MikeSerrano

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Posted May 08 2006 - 08:50 AM

If you don't actively defend your trademarks, and your trademark becomes part of the everyday lexicon, you essentially lose your right to that trademark. This is known as trademark "dilution". Some famous examples of trademark dilution are Kleenex tissues, Scotch Tape, Xeroxing and Aspirin, as these marks were not protected by their respective owners and, today have become almost generic terms.
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#5 of 14 Joseph DeMartino

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Posted May 08 2006 - 11:00 AM

Despite sloppy usage by individuals, neither "Xeorx" nor "Xeroxing" is legally recognized as a generic term legally. Xerox remains a valid trademark and Xerox corporatoin vigorously defends its rights to those terms in the commercial sphere. (I'm not sure about the status of "Kleenex". "Aspirin" was lost as a trademarked brand-name, by Bayer. So was another brand-name from the early part of the last century - "Heroin". Posted Image)

It is certainly true that companies must defend their trademarks when they are made aware of their misuse. Unlike copyright, a trademark is not time-limited. Copyright eventually expires. Trademark doesn't. This is one reason that "mean" companies like Disney and Paramount sometimes end up in the news for seemingly absurd lawsuits to have Mickey Mouse removed from the outside walls of a free pre-school, or the startship Enterprise ™ removed from a fan website. The fact is, if they don't defend their rights in those cases and it can be shown they were aware of them, a commercial infringer on the trademark can cite those instance in defending their own actions. (And comercial infringers sometimes report such usage, precisely in the hope that the companies will turn a blind eye to such "minor" infringement and thus open the floodgates.)

Regards,

Joe

#6 of 14 DeathStar1

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Posted May 08 2006 - 11:26 AM

Hmm,

So, in this case, what if I startup a website(wich I'm planning to do now), and put all the proper trademark information down below. The registration number so people can look it up, etc...How much protection would that be?

#7 of 14 Joseph DeMartino

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Posted May 08 2006 - 11:46 AM

Quote:
How much protection would that be?

No more or less than putting ™ after the trademarked item. It gives you no protection at all if someone infringes on your trademark and you do nothing about it. If you learn that someone is using your trademarked item or closely copying it you have an obligation to tell them to stop, and if they don't, to up the ante and call in the lawyer. (First to threaten, but if necessary, to sue.) If you ignore the problem the people ripping you off (and anyone who follows them) will be able to defend themselves on the basis of your inaction, and your tradmark can be lost.

Of course, you need to have something that can be trademarked. A trademark is a unique identifier of a company, service or product in the context of a particular business activity. Thus Wal-Mart has trademarked the word "Always" in the context of advertising the low prices at a discount retail store. Donald Trump can prevent another host of a reality show like The Apprentice from using "You're Fired!" as a catch phrase, and only he can sell merchandise with the phrase and his likeness on it (like coffee mugs and posters), but he can't collect a royalty everytime an employer uses the phrase when clearing out the dead wood. Posted Image An Apple can be the trademark of a British company when it comes to recorded music, and an American one when it comes to computers. Not everything can be trademarked, and some things can be trademarked in one context, but not in another.

The particular design of the Pinnocchio character from the Disney film can be trademarked, but not the name or the story. Pinnocchio was based on a 19th century novel that has long-since passed into the public domain, so anybody can do a version of Pinnocchio. But they can't duplicate the exact action or dialogue of the Disney film (which is covered by copyright) unless that was taken verbatim from the book and they can't have their puppet look too much like Disney's (as that is covered by trademark)

Regards,

Joe

#8 of 14 Jeff Ulmer

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Posted May 08 2006 - 12:24 PM

About as much protection as putting a copyright notice on your CD - none. The only way to defend your trademark is to use your best efforts to stop infringement.

Also, from my inquiries on the matter, you do not have to register a trademark for it to be valid ™, but a registered trademark carries more weight (®) should you need to litigate. The downside is that to fully protect yourself, you need to register and monitor in every country that recognizes trademarks which is very expensive. Trademarks are also limited in their scope, so more than one person can have a name trademarked, as long as the uses are not the same.

I'm not a lawyer, and I don't play one on TV.

#9 of 14 Yee-Ming

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Posted May 08 2006 - 03:49 PM

Quote:
Originally Posted by Jeff Ulmer
Also, from my inquiries on the matter, you do not have to register a trademark for it to be valid ™, but a registered trademark carries more weight (®) should you need to litigate.
I'd say that's an oversimplification. If your "trademark" is unregistered, you have to prove you have goodwill accrued to you, and you alone, from your use of the "trademark", and that someone else using the same "trademark" (or something confusingly similar) is therefore passing himself off as you. Whereas with a registered trademark, the existence of the registration is something easily proved, and when someone copies the registered trademark, that in and of itself is actionable, without having to prove any passing off or confusion in the public.

And yes, (registered) trademarks are territorial, i.e. only relevant in the country of registration. For those of you wondering why your King of Beers has little or no presence in Europe, the reason is that a Czech brewery, Budvar, has been operating in Europe for at least as long, if not longer, than Anheuser-Busch has been in business. (It's better beer too anyway, but that's another matter... Posted Image)

#10 of 14 MikeSerrano

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Posted May 08 2006 - 05:16 PM

In related news: Wal-Mart attempts to trademark the Smiley Face.
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#11 of 14 Paul McElligott

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Posted May 09 2006 - 04:29 AM

Quote:
Originally Posted by MikeSerrano
Posted Image
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#12 of 14 MarkHastings

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Posted May 09 2006 - 04:36 AM

Can I trademark the air and charge people for breathing it???

Uh oh! Posted Image Posted Image Posted Image Posted Image Posted Image Posted Image Posted Image Posted Image Posted Image Posted Image Posted Image Posted Image Posted Image Posted Image Posted Image Posted Image Posted Image
Hey Wal-Mart! Go ahead and sue me ya bastards! Posted Image

#13 of 14 Francois Caron

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Posted May 09 2006 - 04:55 AM

Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image TRADEMARK INFRINGEMENT!!! Posted Image

Posted Image <- Hope they don't trademark that!

#14 of 14 Bill Buklis

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Posted May 11 2006 - 10:22 AM

That Walmat deal is just nuts. Another example of the new lows our world is sinking to.

Although interesting enough, scanning quickly through the article I read this line:
"It is kind of ironic that this whole dispute is about a smiley face," said Mr Smiley."

I did a double take. What? Mr Smiley? A quick look back and I realized it really said "Mr Simley" (it was a quick scan after all) referring to Walmart spokesman John Simley.

Now isn't that ironic? Talk about close similarities.

Quote:
Some famous examples of trademark dilution are Kleenex tissues, Scotch Tape, Xeroxing and Aspirin
Everything but Aspirin is still a valid trade mark despite their relatively general usage. Kleenex is probably the most used, but take a quick look at competitor products and you will see that they ALL refer to "facial tissue" and not Kleenex.

Interestingly enough I don't hear "Xerox" or "Xeroxing" much anymore. The general trend seems to have shifted towards the basic "copy machine" and "copies". I can't remember the last time I used it that way either.

Here's one most Americans aren't familiar with that our friends over the pond can attest to:

"Hoover". To us it's just a vacuum and vacuuming and not "to hoover" and "hoovering". No idea what the trademark status of the Hoover company is over in Britain, but it's certainly in full force here.

Here's one that you might not realize is a valid trademark and does NOT refer to the product, but actually the brand - Velcro. Velcro is really the premier maker of the "hook and latch" products.
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