Cease & Desist on Domain Name Use

[hotels]

Hello,

A competitor has a site named OrlandoStrollerRentals.com, and I suggested to my friend to get the name StrollerRentalsOrlando.com. My friend then bought that name (on Oct 26 2009), and started offering stroller rentals.

Within the past 2 weeks he received a cease & desist order claiming StrollerRentalsOrlando.com was trademarked. The problem was that this same competitor purchased StrollerRentalOrlando.com & OrlandoStroller.com (on Nov 21 2009), and wanted my friend's site removed.

I don't know what my buddy should do. He has parked the domain for now.

All suggestions greatly appreciated.

Thank you

[wige]

Talk to a trademark lawyer.

There are a lot of different elements that may come into play - when the trademark was registered, if the business is acting on that trademark, etc. You will want to talk to someone familiar with trademark law in your area who can do the appropriate research and give you the best advice on how to proceed in your specific situation.

[morestar]

Did he receive an "Order" or a nicely written letter from a lawyer?

[Big Juice]

try doing a trade mark search to see if their claim is true or not. if they are in the process then do a challenge.

[wdillsmith]

Keep in mind there are two different ways your friend can be challenged. One is via ICANN, which resolved domain disputes, and the second is an old fashioned trademark lawsuit. If he loses an icann challenge, he'll lose the domain and that's about it. If it is a trademark infringement, that is potentially more serious. There are lawyers that specialize in ICANN disputes, separate from trademark lawsuits.

Unfortunately, as with any threatened legal action, your friend will have to weigh the cost of fighting vs. capitulation.

[chandrika]

If you check out the link below about domain name trademark law, it sounds very much as if it is not possible to register such a descriptive phrase as a trademark.


Because that company's mark is descriptive of what the company does, it would not be able to federally register the mark

Can You Trademark A Domain Name? @ErikJHeels (http://erikjheels.com/?p=159)

[deepsand]

From USPTO :

http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=77882068


Word Mark ORLANDO STROLLER RENTALS, LLC
Goods and Services IC 039. US 100 105. G & S: Rental of baby strollers. FIRST USE: 20070600. FIRST USE IN COMMERCE: 20070600
Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code 01.01.09 - Stars, two; Two stars
01.01.13 - Stars - multiple stars with five points
18.03.06 - Baby carriages and strollers; Buggy, baby; Carriages and strollers (baby); Strollers and carriages (baby)
26.17.09 - Bands, curved; Bars, curved; Curved line(s), band(s) or bar(s); Lines, curved
Serial Number 77882068
Filing Date November 30, 2009
Current Filing Basis 1A
Original Filing Basis 1A
Owner (APPLICANT) Orlando Stroller Rentals, LLC LIMITED LIABILITY COMPANY FLORIDA 1107 Tapestry Drive Celebration FLORIDA 34747
Attorney of Record Matthew H. Swyers, Esq.
Description of Mark The color(s) blue, orange and yellow is/are claimed as a feature of the mark. The mark consists of a blue and orange stoller with a yellow star design above, next to the blue words Orlando Stroller Rental, LLC to the right.
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE


Given the great possibility of confusion in the marketplace between Stroller Rentals Orlando and Orlando Stroller Rentals, your friend is highly unlikely to here prevail.

For the future, never knowingly attempt to use as a Trade/Service mark and/or Domain Name that is so blatantly similar to that of a competitor. Even if you prevail, it will be at no small cost in the purse.

[hotels]

Thanks to all for commenting with possible avenues to pursue.
I am having him fax me 2 page letter and domain name to me.

It's a rich keyword dn that will be monetized with organic traffic.
Something I learned from this site.

Will post it when fax arrives.

In meantime I googled trademark office and gov site cam up first.

I was able to search by company name found on whois

Voila found competitor filed for trademark November 29 & pending serial number on gov site search engine(tess) Trademark Electronic Search System.
Free fast way to check if someone does in fact have a trademark!

gov site had a contact tab with an 800 # someone answered within a minute.

Picked the guys brains for a few moments.

Gist I got was takes 3 months for a gov atty to review then another 3 months to approve and issue.
If and when issued there is a 30 day opposition period.
It's in my day planner.
TESS can be

He said the mark(was for a logo).

Think he might be strong arming my buddy with C&D request.

My official city website is not a com but net

All for now

[deepsand]

He said the mark(was for a logo).
See above data from USPTO; mark is for both drawing and words.

Also, take note of Date of First Use in Commerce; unless your friend can demonstrate that he's been using his mark for longer, he's unlikely to prevail.

BTW, ORLANDO STROLLER RENTALS, LLC does not need a Federally approved Mark to prevail, as State rights can also be brought to bear. Here, too, your friend would need to prove an earlier first use.

[hotels]

Thanks for giving me different ways to look at things and providing me with some tech points to address.


Given the great possibility of confusion in the marketplace between Stroller Rentals Orlando and Orlando Stroller Rentals, your friend is highly unlikely to here prevail.

For the future, never knowingly attempt to use as a Trade/Service mark and/or Domain Name that is so blatantly similar to that of a competitor. Even if you prevail, it will be at no small cost in the purse.

He actually or I will soon have Stroller Rental Orlando

I view Stroller Rentals as a generic term like auto parts.
His business address is not even in Orlando.

When I pick a domain name first thing is to select it based on keywords usually 3 words.
If that order is not available then I look to see what combination is.
An analogy if the goal is to roll a 7 there are different combinations to do so



Keep in mind there are two different ways your friend can be challenged. One is via ICANN, which resolved domain disputes, and the second is an old fashioned trademark lawsuit. If he loses an icann challenge, he'll lose the domain and that's about it. If it is a trademark infringement, that is potentially more serious. There are lawyers that specialize in ICANN disputes, separate from trademark lawsuits.

I guess he is going with the infringement because of our earlier dn registration date and fact that he registered a similar name to mine a month later .




Also, take note of Date of First Use in Commerce; unless your friend can demonstrate that he's been using his mark for longer, he's unlikely to prevail.

Even if he decides to attempt to trademark those words after we registered a domain name?
Excuse me for being gullable.


Even if you prevail, it will be at no small cost in the purse.

My buddy seems to be bailing for this reason.
I've got $7 in it for dn transfer fee.
He is offering it on his main site.

Based on this forums(jury)input I may have to do same and optimize page on my site to compete for that search term "orlando stroller rentals"

I may just offer to sell him the name.

I really felt my friend was being steamrolled.

First time anything like this has come up and really appreciate the comments & suggestions.

Wonder if anyone else has been down this road.

Will post C&D request when received for last comments.

Thanks everybody.

[chandrika]

Having the keywords in the domain name anyway is really only a small factor in SEO, so it probably is not worth the trouble and if it is going to create resentment in the long run it probably has more downsides than benefits anyway.

[deepsand]

I view Stroller Rentals as a generic term like auto parts.
His business address is not even in Orlando.
There is no requirement that business names eschew common words, or restrict use of words descriptive of location to only those relating to a particular area relative to that of the business, in order to be protected from use by others.


I guess he is going with the infringement because of our earlier dn registration date and fact that he registered a similar name to mine a month later .

Even if he decides to attempt to trademark those words after we registered a domain name?
Merely registering a DN does not serve as evidence of an unencumbered right to use such, even if such is done prior another asserting a claim re. his own right to use.

The other party claims to have been using "Orlando Stroller Rentals" in commerce for nearly three years; i.e., long before you/your friend decided to use a very similar name.

That prior usage is the basis for said party both filing for a Federally granted Mark, and demanding that you/your friend not use the DN of the confusingly similar name.

And, assuming such claim to be true, said party has very strong claim to both the Mark and the DNs in question.

[hotels]

That prior usage is the basis for said party both filing for a Federally granted Mark, and demanding that you/your friend not use the DN of the confusingly similar name.

I see the light.

Would this premise also hold for say boulder city realtor com and realtor boulder city com

[deepsand]

I see the light.

Would this premise also hold for say boulder city realtor com and realtor boulder city com
Without concrete facts for comparison, it would be speculative to say more that that yes, it could.

Aside from the legal issue, bear in mind that, if you think to gain from such similarity, it stands to reason that the other party might likewise gain, to your loss!

[hotels]

Without concrete facts for comparison, it would be speculative to say more that that yes, it could.

Aside from the legal issue, bear in mind that, if you think to gain from such similarity, it stands to reason that the other party might likewise gain, to your loss!

What I do when creating a site or suggesting a name is try and pick a dn by keyword (3 or 4 word) search term.
If one combo not available then I try another string.

Deep has opened my eyes up in regards to hassle that can come up at a later day.

In future I'll add a wild card(keyword).
Ex: maybe magic stroller rentals dot com
bouder city realtor information dot com
Something like that should fly wouldn't you think?

Reading these forums and newsletters over the years has morphed my thinking into keyword rich domain & files names,good relevant content,juice,easy nav help for serps.

I know there are a lot of other factors that need to be worked as well.

I value the input of everyone that has posted on this thread.
Thanks for that!

[deepsand]

In future I'll add a wild card(keyword).

Ex: maybe magic stroller rentals dot com
That's the key to avoiding litigious disputes; something that make the DBA and/or URL unique.

With respect to, for example, cities, look for nicknames associated with that city.

Orlando - The City Beautiful.

While that doesn't exactly roll off the tongue, it serves to present the idea.

[BluePlanet]

First, Orlando can not be trademarked. Stroller Rental is very generic and the granting of that trademark blocks an entire class of services. It is too generic to be a trademark. That trademark should never have been granted and can be defeated.

However, we are talking about a lot of money and time, and obviously there is not enough money in stroller rentals to make it worth the bother.

I would though tell them that. That is an invalid word mark and can be invalidated in court. Only their graphical mark is valid. They are seriously over-reaching.

This is a common problem. Here in Key West, some B&B trademarked "Key West Bed & Breakfast" and now they are claiming nobody else can use that phrase. The TDC, Tourism Development Council is fighting them and has already spent 60k or so.

Call it Sunshine Stroller Rental or something if you're doing a real business. If it is just about the domain name, give it up.

[deepsand]

First, Orlando can not be trademarked.
But, it can be used within a Trademark/Service Mark.

Stroller Rental is very generic and the granting of that trademark blocks an entire class of services. It is too generic to be a trademark. That trademark should never have been granted and can be defeated.
Same as regards "Orlando."



The Mark is not examined in terms of its individual & separate words, but as the totality of such.

As an example of Proper Names and "generic" words being used within Federally granted Trademarks, there is "Thomas Jefferson," "University," and "Hospital," all within the registered Mark "THOMAS JEFFERSON UNIVERSITY HOSPITAL."


Word Mark THOMAS JEFFERSON UNIVERSITY HOSPITAL
Goods and Services IC 041. US 107. G & S: EDUCATIONAL SERVICES, NAMELY CONDUCTING WORKSHOPS AND SEMINARS IN THE AREA OF HEALTH, FITNESS AND SAFETY, AND PROVIDING COURSES OF INSTRUCTION AT THE COLLEGE AND POST-GRADUATE LEVEL; PHYSICAL FITNESS INSTRUCTION SERVICES. FIRST USE: 19870401. FIRST USE IN COMMERCE: 19870401

IC 042. US 100. G & S: HEALTH CARE SERVICES INCLUDING ASSISTING INDIVIDUALS TO STOP SMOKING, AND WELLNESS COUNSELING SERVICES. FIRST USE: 19690601. FIRST USE IN COMMERCE: 19690601
Mark Drawing Code (1) TYPED DRAWING
Serial Number 73829388
Filing Date October 5, 1989
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition July 10, 1990
Registration Number 1616135
Registration Date October 2, 1990
Owner (REGISTRANT) THOMAS JEFFERSON UNIVERSITY NON-PROFIT CORPORATION PENNSYLVANIA 1020 WALNUT STREET ROOM M-6 PHILADELPHIA PENNSYLVANIA 19107
Attorney of Record GLENN A. GUNDERSEN
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "UNIVERSITY HOSPITAL" APART FROM THE MARK AS SHOWN
Type of Mark SERVICE MARK
Register PRINCIPAL
Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20010123.
Renewal 1ST RENEWAL 20010123
Live/Dead Indicator LIVE


Take particular note of the Disclaimer re. "University Hospital."

Other examples of such abound.

[wige]

Interesting in that example that the disclaimer does not also mention the phrase Thomas Jefferson, which is used by a wide variety of hospitals.

[hotels]

I use efax can't really copy n paste it here.

Here is what they say:
Fax dated January 7 2010
Federal Rule 408 Applies

Thetrademarkcompany.com represents Orlando Stroller Rentals LLC in regards to protection of it's intellectual property. In this regard your registration and your use of the domain name StrollerRentalOrlando.com and corresponding mark Stroller Rental Orlando.

Our client has been continuously using the mark Orlando Stroller Rental in connection with stroller and other mobility device rental services since as early as June of 2007.Our client's services under this mark are advertised worldwide. Because of the excellent quality of the services provided under our client's mark in conjunction with the substantial resources dedicated to promoting the same as our client's mark has become distinctive and synonymous with its mark and now embodies a very substantial amount of valuable business goodwill.

It has come to our client's attention that you are using the domain name StrollerRentalsOrlando.com as well as a mark posted to the site at the domain name in conjunction with services which are virtually identical to our client's. Your registration and use of the domain name and the mark are confusingly similar to our client's mark as listed above and dilutes the distinctiveness of that mark.

Consequently, your unauthorized use of our client's mark as listed above dilutes the distinctiveness of that mark as both a trademark and in a domain name constitutes trademark infringement, unfair competition, and dilution under federal and state trademark and service mark lawa as well as cybersquatting consumer protection act.

You may be liable for compensatory damages measured by both our client's losses and your ill-gotten gains which are subject to trebling as well as attorney's fees and court cost if our client is forced to bring a civil action against you to enforce its rights.

Thus,this is our formal demand that you:
* Cease Use of the mark Stroller Rental Orlando within 14 days;
* Remove all pages posted to the domain name StrollerRentalsOrlando.com within 14 days and consent to the voluntary transfer of the domain name to our client;AND
*Provide an accounting of all profits received as a result of the unauthorized use of our client's mark and THROUGH THE DOMAIN NAME StrollerRentalsOrlando.com

We ask that you confirm, in writing ,that you will comply with our client's demand no later than January 21 2010. Failure to do so or to contact our office concerning this matter will be regarded as non-compliance with our client's demands and will responded to accordingly.

Thank you for your time and attention to this matter. I look forward to your reply at your earliest convenience.

lastly,nothing herein shall be construed as an admission against the interest of our clients all of whose rights are expressly reserved.

[hotels]

That's the key to avoiding litigious disputes; something that make the DBA and/or URL .

Agree and optimize landing page for keyword phrase


First, Orlando can not be trademarked. Stroller Rental is very generic and the granting of that trademark blocks an entire class of services. It is too generic to be a trademark. That trademark should never have been granted and can be defeated.

However, we are talking about a lot of money and time, and obviously there is not enough money in stroller rentals to make it worth the bother.

I would though tell them that. That is an invalid word mark and can be invalidated in court. Only their graphical mark is valid. They are seriously over-reaching.

This is a common problem. Here in Key West, some B&B trademarked "Key West Bed & Breakfast" and now they are claiming nobody else can use that phrase. The TDC, Tourism Development Council is fighting them and has already spent 60k or so.

Call it Sunshine Stroller Rental or something if you're doing a real business. If it is just about the domain name, give it up.

1.Trademark was applied for on November 27 hasn't been issued yet
2. Time,energy and expense is a hassle
3. New name and/or adding it to an existing site as a new product offering will be pursued.

This leads me to ask a new question(theoretically speaking).

Say site owner A has a dn in business for 3 years.
Site B gets a similar dn in business for 1 year.

Site B applies & is granted a mark.

Site A finds out about mark after opposition(challenge) period has lapsed.
Do you think he can challenge mark?

If you can put yourself in both site A and site B shoes.

From site A's view would it be recommended to trademark a kick butt dn?
If you have a lot of kick butt dn's cost can add up.

From site B's view this might not be ethical but would it fly.

Thanks again for all opinions.

[deepsand]

Interesting in that example that the disclaimer does not also mention the phrase Thomas Jefferson, which is used by a wide variety of hospitals.
Most likely owing to the presumption that the fact that the usage of proper names is a matter already settled at Law will be known to any party considering raising an objection, and that the Thomas Jefferson in question cannot possibly raise an objection.

[deepsand]

This leads me to ask a new question(theoretically speaking).

Say site owner A has a dn in business for 3 years.
Site B gets a similar dn in business for 1 year.

Site B applies & is granted a mark.

Site A finds out about mark after opposition(challenge) period has lapsed.
Do you think he can challenge mark?

That the period for raising objections with the USPTO has expired does not preclude one from later raising such in court.

[cw1865]

That's the key to avoiding litigious disputes; something that make the DBA and/or URL unique.

Yes, that will definitely avoid difficulties. BUT, therein lies a defense. The name IS generic.

Even if they have a trademark on the strong 'Orlando Roller Stroller' they will (most likely) be compelled to except 'Orlando' 'Roller' and 'Stroller'

Neither party has a strong distinctive mark. If somebody took a TM out on rollerstrollerorlando.com and didn't have the domain, an argument could be made that the mark is abandoned.

I do see a fairly strong potential for 'confusion as to source'

You have to determine if this is something worth fighting for, if it is you have to get an intellectual property attorney, hopefully with some experience in trademarks.

[deepsand]

Ignore them, they'll go away.
And, if they don't, you'll pay for the damages, correct? :mrgreen:

[deepsand]

Yes, that will definitely avoid difficulties. BUT, therein lies a defense. The name IS generic.
How is the concatenation of a set of words necessarily "generic?"


Even if they have a trademark on the strong 'Orlando Roller Stroller' they will (most likely) be compelled to except 'Orlando' 'Roller' and 'Stroller'
Agreed, as did "Thomas Jefferson University Hospital" explicitly disavow any claim to "university hospital."


If somebody took a TM out on rollerstrollerorlando.com and didn't have the domain, an argument could be made that the mark is abandoned.
Even if such mark were actively used in commerce?

[cw1865]

When I learned about the Lanham Act, and since that time I have only set foot in Federal court once, the general rule is that geographic indications are, by nature, generic, if the geographic term is being used to describe the origin of the goods (the strollers probably weren't made in Orlando, but still the use of Orlando here is to place the locus of the deal in and around Orlando). We spent a fair amount of time discussing PROTECTED geographic indications, ie. Napa Wine, Florida Orange Juice, Champagne (from France), etc. - which remain generic descriptors of the product, but which prevent others from outside that region from using that name.

Furthermore, a designation of origin combined with a non-distinctive or generic term such as we see here 'Stroller{s}' and 'Rentals' will result in weak mark and you'll have difficulty preventing others from adopting slightly different marks.

The exception to this rule {see my case cite below} is when a geographic mark coupled with a generic has been exclusively used over time and acquired a secondary meaning as TM – irrespective of the fact that it might coincidentally be a designation of origin (you had used an example of the University Hospital, for this exception, think ‘NYU’)


So, overall when I am looking at these marks, I'm not seeing a single distinctive word, everything about the mark is at best descriptive, at worst generic. While there is some difference between 'generic' and 'descriptive' - for purposes of establishing a trademark, there really isn't much of a difference {the only difference being that a descriptive mark has the secondary meaning exception I described above} - A trademark that is descriptive and lacks secondary meaning is invalid. Bada Co. v. Montgomery Ward & Co., 426 F.2d 8, 11 (9th Cir. 1970). Everything I've seen here leads me to believe that the marks describe a 'genus' or family of goods and are hence generic.

[deepsand]

While I'm off to find the cited case, consider that "Orlando" is also a family name. Whether or not such is here the case I cannot say.

[cw1865]

That happens not to be the case here: "Hello! My name is Shannon Tanner and I am the owner of Orlando Stroller Rentals."

They're apparently located in Celebration, FL (metro Orlando). EVEN if the surname WAS Orlando, they'd have a difficult time precluding use of that name in and around Orlando. Bring that to NYC and its a different matter.

What I think we're seeing here is the clash between old school marketing, ie 'Hertz' clashing with the new school 'ranking well for generic searches in google', ie. Florida Car Rental (the old school approach was to put a lot of 'A's' in front of your name so that you would be first in the phone book)

[deepsand]

Reviewed Bada Co. v. Montgomery Ward & Co., etal., and am puzzled as to its relevance here, in that such did, with respect to the issue of a mark, relate to the use of the words "micro" and "precision" alone, two words which are clearly no more than descriptive.

In this regards, I find nothing there above and beyond that already addressed by disclaimer re. "university hospital" as above cited; or, here, the words "stroller" and "roller."

Additionally, it must be noted that "roller stroller" is neither generic nor descriptive, in that it describes a new type of stroller, of which there are several different versions; i.e., the phrase does not describe a specific kind of "roller stroller." See Gadgets: The Roller Buggy Stroller [Technology] | Bowl of Serial (http://www.bowlofserial.com/2009/08/20/gadgets-the-roller-buggy-stroller/) and RollerStroller (http://rollerstroller.com/) .

[cw1865]

I wrote 'roller stroller' just because it was on the tip of my tongue and it flowed to my fingertips, but if we reexamine the OP: "A competitor has a site named OrlandoStrollerRentals.com, and I suggested to my friend to get the name StrollerRentalsOrlando.com. My friend then bought that name (on Oct 26 2009), and started offering stroller rentals.

Within the past 2 weeks he received a cease & desist order claiming StrollerRentalsOrlando.com was trademarked. The problem was that this same competitor purchased StrollerRentalOrlando.com & OrlandoStroller.com (on Nov 21 2009), and wanted my friend's site removed."

So really we're looking at 'Orlando Stroller Rentals' and my guess is that strollerrentalsorlando.com is not a specific trademark but that they're claiming dilution. 'Stroller' would be generic in this context because while there are different strollers, they're clearly 'strollers' - compare to 'Stroller' as a SUGGESTIVE name for a 'generic device' 'Liquid Oxygen Equipment' - http://www.zapconnect.com/products/index.cfm/fuseaction/products_display_detail/eregnum/3004972304/owner_operator_number/9008476/product_code/BYJ/3004972304.html

[deepsand]

What I think we're seeing here is the clash between old school marketing, ie 'Hertz' clashing with the new school 'ranking well for generic searches in google', ie. Florida Car Rental (the old school approach was to put a lot of 'A's' in front of your name so that you would be first in the phone book)
Hertz is both descriptive - a unit of frequency - and a proper name - named after the German physicist Heinrich Hertz.

And, yet, a USPTO search for hertz finds 117 records.

[deepsand]

So really we're looking at 'Orlando Stroller Rentals' and my guess is that strollerrentalsorlando.com is not a specific trademark but that they're claiming dilution.
Correct.

See http://www.webproworld.com/other/98205-cease-desist-domain-name-use.html#post494323 for content of said notice.

[cw1865]

Sometimes my intuition is correct!

For Trademarks you have:

* fanciful,
* arbitrary,
* suggestive,
* descriptive (including surnames), and
* generic.

Strength of Trademarks (BitLaw) (http://www.bitlaw.com/trademark/degrees.html#fanciful)

Alamo may have been a better choice for my example then! but for purposes of car rentals, I think Hertz (NOW, TODAY) is most aptly classified as 'arbitrary' {I don't associate the brand with the surname at this juncture}-the status or strength of a mark can change over time, the prime example being 'aspirin' which is now 'generic' despite being 'fanciful' when it was first created.

[deepsand]

Actually, "aspirin" is derivative, originating as A = Acetyl and "Spirsäure" = an old (German) name for salicylic acid.

Would that make it "descriptive?"

And, it lost its trademark protection in France, Russia, the United Kingdom, and the United States by way of the 1919 Treaty of Versailles, as part of Germany's war reparations following WWI.

[cw1865]

Aspirin is THE example of how a trademark can become generic...another example is zipper, its just kind've taught that way. As to its original status as a trademark they don't really go into that. Descriptive names tell the user what the product is itself, so with respect to aspirin you'd have to go back in time and ask people if the name 'aspirin' suggests the contents. the 'sp' is connected to the old German word? Would the average user understand the connection to the contents? My gut says, probably not....would the average ENGLISH-speaking chemist get it? Perhaps a well educated one who saw the connection to a German company and knew the German word for 'salicylic' - So, in English I'm leaning towards 'fanciful' but German? I'd say MAYBE suggestive....All I do know is that at least at some point, the term was distinctive enough to get a trademark; by LEGAL definition, better than 'descriptive'

[deepsand]

While is is indeed true to say "Aspirin is THE example of how a trademark can become generic ... its just kind've taught that way," it is also true that such teaching is factually incorrect.

Had said trademark not have been surrendered as cited, "aspirin" may very well not have become generic.

As for "fanciful" vs "descriptive," I'd lean in the direction pointed to within the context of the originator's native tongue, particularly if the initial filing for the mark was in a country whose primary language was such. OF course, other countries are not necessarily bound to hold the same.

Taking, for example, modern drugs, the active compound in Aleve is naproxin sodium; and, the generic product is known as simply naproxin. That consumers do or do not know anything re. the chemistry of naproxin sodium is not a barrier to their using the descriptive term "naproxin."

[cw1865]

Descriptive terms, unless they fit into the exception that I described above, are not protected by trademark. They must rise to the level of being, at least 'suggestive' so you can stick Naproxen on the bottle, but that is obviously generic - 'Naprosyn' would be suggestive. The napro has five of the 8 letters of Naproxen, and while I unfortunately have needed NSAIDs and get it, the fact that the market of people wouldn't get it is beside the point, the point is that the English speaking chemists WOULD probably see the connection.

Aleve can be protected of course. Nothing about that name suggests that its contents are 'naproxen sodium' - so the question is whether its fanciful, arbitrary or suggestive.........For that one I would say that its between arbitrary and suggestive. Part of me says that it is akin to Apple, but part of me says 'suggestive' because the name kind've tells you what to expect (ie. it will alleviate your pain).....-but as a lawyer I don't care, the bottom line for me is whether it can be protected, all I have to do is to distinguish between generic/descriptive and fanciful/arbitrary/suggestive......

[deepsand]

"... the point is that the English speaking chemists WOULD probably see the connection" is precisely the point that I was making re. "aspirin" and those speaking German.

[cw1865]

By the way, here's the aspirin case ruling 'aspirin' to be generic.....

Bayer Co. (http://cyber.law.harvard.edu/metaschool/fisher/domain/tmcases/bayer.htm)

“On November 30, 1918, an examiner of the Patent Office declared that the trade-mark was no longer valid and ordered its cancellation. From this decision no appeal was taken, and that feature of the case therefore falls out of consideration.”


Note the date, after the end of WWI, but before Germany signs the Treaty of Versailles. By 11/30/18 I would doubt that the cancellation of the TM was in anticipation of a specific treaty term.


Judge Hand also makes no note of the Treaty whatsoever and 'Bayer Co.' is entertaining this action in as late as 1921 [the case notes that 'The predecessor of the plaintiff was a German corporation engaged in the manufacture of chemical products, among them the drug in question, which was its own invention.]


Where the case turns in Judge Hand's mind is {I think} here:


"After the autumn of 1915 the plaintiff totally changed its methods, and thereafter no tablets reached the consumer without its own name. But it is significant that even then it used the word 'Aspirin' as though it was a general term, although it is true that there was ample notice upon the bottles and boxes that 'Aspirin' meant its manufacture. The most striking part of the label read, 'Bayer-- Tablets of Aspirin.' While this did not show any abandonment of the name, which there has never been, it did show how the plaintiff itself recognized the meaning which the word had acquired, because the phrase most properly means that these tablets were Bayer's make of the drug known as 'Aspirin.' It presupposes that the persons reached were using the word to denote a kind of product. Were it not so, why the addition of 'Bayer,' and especially why the significant word 'of'?"


-----------------------


Bayer plead that the name 'Aspirin' was an 'artificial' trademark, the Defendant that the name 'Aspirin' was merely 'descriptive'

[cw1865]

Here is a link with the full text of the Treaty of Versailles. Check it out, very interesting, there are some REALLY OBSCURE provisions in there.

I have obviously read a few references to the Germans surrendering aspirin, I have yet to find a direct reference to it in the Treaty itself:

I DID find:

"Notwithstanding the provisions of Article 297, where immediately before the
outbreak of war a company incorporated in an Allied or Associated State had
rights in common with a company controlled by it and incorporated in Germany to
the use of trademarks in third countries, or enjoyed the use in common with such
company of unique means of reproduction of goods or articles for sale in third
countries, the former company shall alone have the right to use these trade-marks
in third countries to the exclusion of the German company, and these unique means
of reproduction shall be handed over to the former company, notwithstanding any
action taken under German war legislation with regard to the latter company or
its business, industrial property or shares. Nevertheless, the former company, if
requested, shall deliver the latter company derivative copies permitting the
continuation of reproduction of articles for use within German territory."

I am reading this to mean that Bayer Germany forfeits its trademark to its successor, not that the trademark itself is unenforceable, nevertheless, peruse it, maybe it IS in there, it really is a LONG treaty...

I love this clause:

"Within the same period Germany will hand over to His Britannic Majesty's
Government the skull of the Sultan Mkwawa which was removed from the Protectorate
of German East Africa and taken to Germany."

WOW

[deepsand]

Note the date, after the end of WWI, but before Germany signs the Treaty of Versailles. By 11/30/18 I would doubt that the cancellation of the TM was in anticipation of a specific treaty term.
Why make such assumption?

There is here in fact an admixture of claims and counter-claims re. both Patent and Trademark protections. Furthermore, there is evidence here of said compound having been surreptitiously being here marketed under the formal English name of the chemical compound for which a Patent had been issued, but not under the Trademarked name.

"It is impossible to ascertain how much, if any, of this infringing drug was marketed under the name 'Aspirin,' but it is probable that little or none of it reached the retail druggists under that name.

The plaintiff called a number of retail druggists, who swore with substantial unanimity that they had never sold the infringing drug to the consumer under the name 'Aspirin,' and in many cases that the customers themselves asked for it as 'Acetylo' or as 'acetyl salicylic acid.' In Europe, where the plaintiff's predecessor appears not to have enjoyed the benefit of a patent, the drug was manufactured in open competition, but the name 'Aspirin' was uniformly respected as a trade-mark, other manufacturers selling either under the name mentioned in the patent or under artificial trade-marks invented by the manufacturers themselves."

Furthermore, while it is the case that "On November 30, 1918, an examiner of the Patent Office declared that the trade-mark was no longer valid and ordered its cancellation. it is also the case that " From this decision no appeal was taken, and that feature of the case therefore falls out of consideration. I.e., the merits of such were not party of the body of the cited case.

To hold that the USPTO should have only coincidentally issued such decision a mere 7 days following Germany's surrender is to very badly try credulity. This action more strongly suggests a case of the victor plundering the vanquished. And, considering the circumstances if the time, it should not surprise that said decision was not appealed.

Lastly, I find Judge Hand's reasoning particularly convoluted, relying as it does on imposing an Anglo-centric interpretation on a word that is Germanic in origin. Furthermore, to hold that Bayer's having placed its name on tablets of its own manufacture beginning in 1915 served as evidence that Bayer itself was using the word "Aspirin" in the generic sense is so non sequitur as to be laughable.

Finally, it must be noted that this was not a case of the original Bayer AG company trying to reclaim said Trademark, but rather a US company born of the assets of Bayer AG that were confiscated by the Allies following WWI.

In short, this case addresses the matter of a successor to Bayer AG trying to regain that which had previously been lost by Treaty.

[deepsand]

Here is a link with the full text of the Treaty of Versailles. Check it out, very interesting, there are some REALLY OBSCURE provisions in there.

I have obviously read a few references to the Germans surrendering aspirin, I have yet to find a direct reference to it in the Treaty itself:

I DID find:

"Notwithstanding the provisions of Article 297, where immediately before the
outbreak of war a company incorporated in an Allied or Associated State had
rights in common with a company controlled by it and incorporated in Germany to
the use of trademarks in third countries, or enjoyed the use in common with such
company of unique means of reproduction of goods or articles for sale in third
countries, the former company shall alone have the right to use these trade-marks
in third countries to the exclusion of the German company, and these unique means
of reproduction shall be handed over to the former company, notwithstanding any
action taken under German war legislation with regard to the latter company or
its business, industrial property or shares. Nevertheless, the former company, if
requested, shall deliver the latter company derivative copies permitting the
continuation of reproduction of articles for use within German territory."

I am reading this to mean that Bayer Germany forfeits its trademark to its successor, not that the trademark itself is unenforceable, nevertheless, peruse it, maybe it IS in there, it really is a LONG treaty.
I concur with this conclusion.

I've done a full search of Part VII. Penalties (Arts. 227–230), Part VIII. Reparation (Arts. 231–247), Part IX. Financial Clauses (Arts. 248–263), and Part X. Economic Clauses (Arts. 264–312), and find no mention of aspirin by name.

[cw1865]

Why make such assumption?

The initial suit by Bayer (whether it was still 'Bayer AG' or Bayer Co. isn't particularly clear), was brought a month after the US declared war on Germany. So, Bayer AG does get its assets seized, but Bayer Co., at the time of the decision is simply declared to be a 'successor' (describing Bayer AG as its predecessor) holding 'proper assignments'


There is here in fact an admixture of claims and counter-claims re. both Patent and Trademark protections. Furthermore, there is evidence here of said compound having been surreptitiously being here marketed under the formal English name of the chemical compound for which a Patent had been issued, but not under the Trademarked name.

By the time the suit is filed, the patent itself had clearly expired. The first line of the suit tells you precisely what Bayer Co. was seeking: "This is a suit in equity between the plaintiff, a New York corporation, and the defendant, a Massachusetts corporation, to enjoin infringement of the plaintiff's common-law trade-mark 'Aspirin.'"


"It is impossible to ascertain how much, if any, of this infringing drug was marketed under the name 'Aspirin,' but it is probable that little or none of it reached the retail druggists under that name.

Yes, and on appeal this is the 'fact' , ie. its given....although I find it difficult to believe that they're willing to infringe a patent but pay heed to the trademark.

The plaintiff called a number of retail druggists, who swore with substantial unanimity that they had never sold the infringing drug to the consumer under the name 'Aspirin,' and in many cases that the customers themselves asked for it as 'Acetylo' or as 'acetyl salicylic acid.'

They were plaintiff's witnesses who are swearing they never broke the law. But again, its an appeal so that fact is 'given'


In Europe, where the plaintiff's predecessor appears not to have enjoyed the benefit of a patent, the drug was manufactured in open competition, but the name 'Aspirin' was uniformly respected as a trade-mark, other manufacturers selling either under the name mentioned in the patent or under artificial trade-marks invented by the manufacturers themselves."

If this were today, this would be a lot more pertinent because of international agreements. In that era, much less so.


Furthermore, while it is the case that "On November 30, 1918, an examiner of the Patent Office declared that the trade-mark was no longer valid and ordered its cancellation. it is also the case that " From this decision no appeal was taken, and that feature of the case therefore falls out of consideration. I.e., the merits of such were not party of the body of the cited case.

To hold that the USPTO should have only coincidentally issued such decision a mere 7 days following Germany's surrender is to very badly try credulity. This action more strongly suggests a case of the victor plundering the vanquished. And, considering the circumstances if the time, it should not surprise that said decision was not appealed.

They had already plundered the vanquished though. Bayer AG's assets get seized and sold off, Bayer Co., while bearing the name is simply a New York corporation.


Lastly, I find Judge Hand's reasoning particularly convoluted, relying as it does on imposing an Anglo-centric interpretation on a word that is Germanic in origin.

Well, actually Learned Hand is a famous judge. While there are a few, off the top of my head there are four (prior to WWII) that pop into my head: Marshall, Holmes, Cardozo and Hand. The court is supposed to be 'Anglo' centric, its a Federal court sitting in the US! {When in Rome, do as the Romans do). But even then, apparently the German word itself was derived from the Latin genus/species designation of the plant from which it is derived: "Salicylic acid was first extracted from the plant Spiraea ulmaria, and the principal component of this extract was known by the German term spiroylige Säure, which was later shortened to Spirsäure."


Furthermore, to hold that Bayer's having placed its name on tablets of its own manufacture beginning in 1915 served as evidence that Bayer itself was using the word "Aspirin" in the generic sense is so non sequitur as to be laughable.

The point was that they were writing 'Bayer - Tablets of Aspirin' - clearly they were referring to Aspirin in the generic sense.


Finally, it must be noted that this was not a case of the original Bayer AG company trying to reclaim said Trademark, but rather a US company born of the assets of Bayer AG that were confiscated by the Allies following WWI.

Following the declaration of war to be precise. Its not clear if the original Bayer AG brought the case and Bayer Co. became the successor in interest and took over the litigation after Bayer AG was out of the picture.


In short, this case addresses the matter of a successor to Bayer AG trying to regain that which had previously been lost by Treaty.

The procedural history suggests otherwise, the action is brought in May, 1917, a month after the US declaration of war against Germany, to assert a trademark that, at least at that juncture, was still recognized in law. They weren't trying to 'regain' anything....

[deepsand]

The initial suit by Bayer (whether it was still 'Bayer AG' or Bayer Co. isn't particularly clear), was brought a month after the US declared war on Germany. So, Bayer AG does get its assets seized, but Bayer Co., at the time of the decision is simply declared to be a 'successor' (describing Bayer AG as its predecessor) holding 'proper assignments'
But, Bayer AG and Bayer, a NY Corp., are clearly not one and the same. From Bayer - 1914 – 1925 (http://www.bayer.com/en/1914-1925.aspx) we read "The company's U.S. assets, including its patents and trademarks, were confiscated in 1917 and auctioned off to its competitors." Given that the cited case states that "The bill was filed in May, 1917," presumably the NY Corp. was one of the Bayer AG assets that were seized.


By the time the suit is filed, the patent itself had clearly expired. The first line of the suit tells you precisely what Bayer Co. was seeking: "This is a suit in equity between the plaintiff, a New York corporation, and the defendant, a Massachusetts corporation, to enjoin infringement of the plaintiff's common-law trade-mark 'Aspirin.'"
Agreed. And, yet, a good deal of Judge Hand's opinion deals with the matter re. the English chemical name under which said compound was patented. This owing to the fact that the Defendant argued that the name "Aspirin" became descriptive by virtue of the Patent having fallen into the public domain. I.e., Defendant argued that the loss of the Patent gave rise to a concurrent loss of the Trademark.

[QUOTE=cw1865;497557]Yes, and on appeal this is the 'fact' , ie. its given....although I find it difficult to believe that they're willing to infringe a patent but pay heed to the trademark.

They were plaintiff's witnesses who are swearing they never broke the law. But again, its an appeal so that fact is 'given'
From the cited case, "This patent issued on February 27, 1900, and therefore expired 17 years thereafter." Thus, said Patent expired shortly before said case was initiated.

Given the propensity of the time for engaging in underground trade, and the ease with which such was facilitated, that such smuggling should have occurred gives no cause for surprise. Furthermore, the mere sale of such goods as were "surreptitiously introduced into this country" would not in and of itself constitute patent infringement.


They had already plundered the vanquished though. Bayer AG's assets get seized and sold off, Bayer Co., while bearing the name is simply a New York corporation.
Still, that the initial filing of the cited action should occur so close on the heals of the expiration of the Patent, and that the USPTO should revoke the Trademark a mere 7 days following Germany's surrender, defies the odds that such were merely coincidental.


Well, actually Learned Hand is a famous judge. While there are a few, off the top of my head there are four (prior to WWII) that pop into my head: Marshall, Holmes, Cardozo and Hand. The court is supposed to be 'Anglo' centric, its a Federal court sitting in the US! {When in Rome, do as the Romans do). But even then, apparently the German word itself was derived from the Latin genus/species designation of the plant from which it is derived: "Salicylic acid was first extracted from the plant Spiraea ulmaria, and the principal component of this extract was known by the German term spiroylige Säure, which was later shortened to Spirsäure."
I am quite aware of Judge Hand's stature. Nevertheless, I here find his reasoning here to leave much to be desired.


The point was that they were writing 'Bayer - Tablets of Aspirin' - clearly they were referring to Aspirin in the generic sense.
How does the physical presence of a company name and a protected name render the latter generic?

By that line of reasoning, one would be justified in concluding that, to name by one of many possible examples, Intel's Itanium mark is generic because both "Intel" and "Itanium" appear on such CPU chips.

With regards to Bayer, it introduced the "Bayer Cross" in 1904, with such being imprinted on its tablets, well before this action began.


Following the declaration of war to be precise. Its not clear if the original Bayer AG brought the case and Bayer Co. became the successor in interest and took over the litigation after Bayer AG was out of the picture.
Well, since this case was brought in the US, by a NY Corp., following the declaration of war, I think that we can reasonably conclude that at this point Bayer AG was not party to this case.


The procedural history suggests otherwise, the action is brought in May, 1917, a month after the US declaration of war against Germany, to assert a trademark that, at least at that juncture, was still recognized in law. They weren't trying to 'regain' anything....
While you are correct with regards to the timing of the action vis-a-vis the war, a fact that I initially overlooked owing to the 1921 date on the decision, it remains a case of a successor to Bayer AG attempting to, in the US, retain control of a brand name that still was, at the time of filing, under Trademark protection. And, since such case endured beyond the point in time at which the USPTO voided said Trademark, it then became a case of regaining that which had been lost.

Now, care to speculate re. the validity of Google's trademark for "PageRank?" ;)

[cw1865]

But, Bayer AG and Bayer, a NY Corp., are clearly not one and the same. From Bayer - 1914 – 1925 (http://www.bayer.com/en/1914-1925.aspx) we read "The company's U.S. assets, including its patents and trademarks, were confiscated in 1917 and auctioned off to its competitors." Given that the cited case states that "The bill was filed in May, 1917," presumably the NY Corp. was one of the Bayer AG assets that were seized.

I interpret it to mean that Bayer Co., a NY Corporation, is the purchaser of the seized assets (ie. they have, according to Judge Hand, 'proper assignments')


By the time the suit is filed, the patent itself had clearly expired. The first line of the suit tells you precisely what Bayer Co. was seeking: "This is a suit in equity between the plaintiff, a New York corporation, and the defendant, a Massachusetts corporation, to enjoin infringement of the plaintiff's common-law trade-mark 'Aspirin.'"
[QUOTE=deepsand;497560]Agreed. And, yet, a good deal of Judge Hand's opinion deals with the matter re. the English chemical name under which said compound was patented. This owing to the fact that the Defendant argued that the name "Aspirin" became descriptive by virtue of the Patent having fallen into the public domain. I.e., Defendant argued that the loss of the Patent gave rise to a concurrent loss of the Trademark.

"In the case at bar the evidence shows that there is a class of buyers to whom the word 'Aspirin' has always signified the plaintiff, more specifically indeed than was necessary for its protection. I refer to manufacturing chemists, to physicians, and probably to retail druggists.



The crux of this controversy, however, lies not in the use of the word to these buyers, but to the general consuming public, composed of all sorts of buyers from those somewhat acquainted with pharmaceutical terms to those who knew nothing of them. The only reasonable inference from the evidence is that these did not understand by the word anything more than a kind of drug to which for one reason or another they had become habituated."

To me, this is not 'off the wall' or in any way lacking a sufficient legal basis. Problem is, to test Hand you have to go back in time and put yourself in the position of a buyer of aspirin from 1917-1921 and we just can't do that.


This owing to the fact that the Defendant argued that the name "Aspirin" became descriptive by virtue of the Patent having fallen into the public domain. I.e., Defendant argued that the loss of the Patent gave rise to a concurrent loss of the Trademark.

Well, to be precise the Defendant was arguing that the expiration of the patent coupled with the fact that the word 'Aspirin' had become the {generic} name for the drug...

"and expired on February twenty-seventh, 1917, and that thereafter the product fell into the public domain and with it the word, 'Aspirin,' which had become the name for the drug and therefore descriptive. It denied the charges of unfair trade in the bill."


Given the propensity of the time for engaging in underground trade, and the ease with which such was facilitated, that such smuggling should have occurred gives no cause for surprise. Furthermore, the mere sale of such goods as were "surreptitiously introduced into this country" would not in and of itself constitute patent infringement.

You're correct, the resellers are not on the hook for patent infringement, the pirate mfg would be of course {the sale needs to have a fairly strong nexus with the infringement to be actionable}


Still, that the initial filing of the cited action should occur so close on the heals of the expiration of the Patent,

This is NOT coincidental. The patent is expiring, United Drug knows it and obviously is going to market. United Drug does so, obviously using the name aspirin, and Bayer, not wanting to sit on its rights, brings an action {probably hoping to get a preliminary injunction}


and that the USPTO should revoke the Trademark a mere 7 days following Germany's surrender, defies the odds that such were merely coincidental.

Perhaps the examiner thought he was 'sticking it' to the Germans, perhaps its the result of United Drug politically maneuvering the system. But at this juncture, they're not 'screwing the Germans' anymore {they had already done so}, they're sticking it to the US corporation who had purchased Bayer AG's assets at auction.


I am quite aware of Judge Hand's stature. Nevertheless, I here find his reasoning here to leave much to be desired.

How does the physical presence of a company name and a protected name render the latter generic?

Well, first off Hand acknowledges that the experts (chemists) in the industry understand the distinction between aspirin, as being A/S acid coming from Bayer and A/S acid being generic. But Hand rules that its the buyers in the market that matter and the case clearly rules that the buyers in the market understand and interpret the word as being generic.

If you ask how Bayer's description on its bottles rendered the name generic, Hand focused on the word 'of' being, in his mind, a synonym for 'containing' - this bottle should've read: 'Aspirin, by Bayer - Tablets of A/S acid'


With regards to Bayer, it introduced the "Bayer Cross" in 1904, with such being imprinted on its tablets, well before this action began.

Was United Drug using the cross?


Well, since this case was brought in the US, by a NY Corp., following the declaration of war, I think that we can reasonably conclude that at this point Bayer AG was not party to this case.

My gut was telling me that would be way too quick for the government - declare war, seize assets, sell them and the successor files an action to enjoin, all within a month. I could still be wrong, but I still believe the initial action is filed by Bayer AG, notwithstanding the declaration of war. The US Trading with the Enemy Act passed October 6th, 1917. This appoints an 'Alien Property Custodian'

From what I could gather, Bayer's assets get seized, this would include their interest in the litigation. The Alien Property Custodian holds the assets in trust until their disposition, they are sold in 1918, and Bayer Co., a NY Corp. is the legal successor.

-----------------
On the Treaty question, I was merely trying to demonstrate that Bayer AG loses its property interest in the trademark (vis-a-vis Bayer Co.), the Treaty ISN'T the reason the word 'aspirin' loses trademark protection.


Now, care to speculate re. the validity of Google's trademark for "PageRank?" ;)

Google? per se unenforceable....hehe. Its not particularly strong, that is for sure. We'll see if 'googling' becomes generic at some point.

With respect to google, I actually think they should encourage 'googling' to become generic {as opposed to Xerox taking actions to ensure 'Xeroxing' was replaced with 'photocopying'} - only google can have google.com

[deepsand]

Was United Drug using the cross?
That I do not know. However, if they were, I doubt that it would have used the crossed word "Bayer."


On the Treaty question, I was merely trying to demonstrate that Bayer AG loses its property interest in the trademark (vis-a-vis Bayer Co.), the Treaty ISN'T the reason the word 'aspirin' loses trademark protection.
However, it cannot be said that it lost said mark owing simply to the name having passed into common usage, given that said action was borne out of a seizure of assets, the likes of which was formalized by said Treaty, with such having occurred prior to Judge Hand's ruling.

Were there similar actions brought in other countries prior to said Treaty?

What if said Treaty had restored such assets to Bayer AG?