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Trademark question?

Discussion in 'General Board' started by donton, May 14, 2015.

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  1. donton United Kingdom

    donton Active Member

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    Hi guys,

    Today I had a few listings removed from a well known auction site due to a 'trademark violation'.

    The 'violation' is based on the use of a generic phrase to describe the style of this particular product. This phrase has been used by multiple brands in my industry over the last 10-20 years, and continues to be used by at least two or three brands today.

    For example, it'd be like an unknown jeans brand trademarking the term 'bootcut' - so major players like Levi and Wrangler couldn't use it any longer, despite them having used it for decades.

    I buy these items from a brand, this particular brand is stocked in Boots, Tesco and many more high street shops. We all know this person won't go after them, because her claims are frivolous, and her trademark frankly a joke.

    The person that registered the trademark is basically a bedroom seller and a complete nobody in the industry, hell bent on causing trouble for everyone else. The mark was only registered a couple of weeks ago, at the end of April.

    My question is: Is it abusive to register a trademark on a phrase that has been used for years in a particular industry? The listings I had removed from the aforementioned website actually pre-dated the trademark application itself. So I had used the terms in my listings before this idiot even considered trademarking them.

    I've done some searching online but can't find a whole lot about abusive trademark registrations. I'm not particularly concerned about the listings being removed, but I am concerned about this moron contacting my webhost with a cease and desist letter and potentially having my website disrupted (where I also sell the same products).

    Any advice would be much appreciated! Thank you.
     
  2. Domain Forum

    Acorn Domains Elite Member

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  3. ian

    ian Well-Known Member Acorn Supporter

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    So hard to know without the actual trademark name, but appreciate you not wanting to disclose it. Could it be classed as an abusive trademark, yes, but you'd need to contact the IPO as they effectively approved the application. Equally, if the trademark directly impacts upon sellers/manufacturers etc, then they have a legal right to oppose the application within a set timeframe otherwise it gets approved; trouble is, quite often you'll not even know an application has been made, as the requirements of the IPO as to where they publish are limited (journal and their website!).

    If you feel the fight would be too big for you, contact the large players that would have issue with this trademark and speak to their legal team about objecting to it.
     
  4. accelerator United Kingdom

    accelerator Well-Known Member

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    It sounds to me like it could well be abusive.

    The problem you have is sites like eBay will go "oh, they've got a Trademark" and then restrict others from using the term. eBay won't judge the merits of the Trademark. That gives you a possibly unfair headache.

    Did the party applying for a Trademark build up a reputation for using the Trademark?

    Often times it seems to me that Trademarks are granted all too easily.
     
  5. jasman United Kingdom

    jasman Active Member

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    I believe a trademark owner must actively enforce/ defend its trademark and if it doesn't, there would be grounds for the trademark to be removed. Therefore a trademark can be a burden to a small-time person/ company as the cost of defending it in terms of time and legal expenses could easily outweigh any benefit if they aren't making any money out of it.

    Although it may be a pain in the arse to use a synonym in your Ebay ad at the moment, if the TM owner doesn't enforce their TM by preventing the big players in the market from using the TM, there could be grounds for having it removed down the line. And if they do attempt to enforce it against the big players, well a bedroom seller vs several big corporations in a legal battle sounds like a recipe for bankrupcy. The corporations will just drag it out until the little guy runs out of funds. Sounds like the TM owner may have acquired a burden for themselves.
     
  6. foz

    foz Well-Known Member Exclusive Member

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  7. donton United Kingdom

    donton Active Member

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    Thanks for all of the helpful replies, I really appreciate them!

    I had a look over the revoke option last night but to be honest all the lingo goes well over my head.

    I'm taking advice from a solicitor this morning, and the brands themselves have engaged their own legal teams to try and have the trademark cancelled.

    There's nothing worse than an idiot competitor who goes and f**ks everything up for everyone else out of sheer spite.
     
  8. donton United Kingdom

    donton Active Member

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    As far as I can see on the IPO website it's a word mark for a two letter phrase.

    This particular phrase is as generic as it gets in my niche, and several brands have used it for 20 years or more. It's beyond belief that anyone would approve a trademark for it! Especially to a company that has only popped up in the last 12 months or so.
     
  9. foz

    foz Well-Known Member Exclusive Member

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    Any disclaimer?

    e.g. Registration of this mark shall give no right to the exclusive use of the word(s)
     
    Last edited: May 15, 2015
  10. donton United Kingdom

    donton Active Member

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    I can't see any disclaimer. A few people have had a look at this for me including an IP lawyer - they said the trademark should be revoked fairly promptly.

    The issue is, I've lost listings with 3-4 years of sales history on them because of this stunt. Oh well!
     
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