Re: [CH] Re: Evil corporate types

Tina Brooks (shoestring_louise@yahoo.com)
Tue, 3 Jun 2008 09:59:21 -0700 (PDT) 

Jim's got it right. The fact of the matter is, if you can't prove your case, you can't win.
 
 Such is actually how we managed to win our Peppermaster™ . We filed for $400, the ex-partner contested for $50, we filed our response for $500 to which he was supposed to file his proof that he owned it... He never filed... so, by default we won. Peppermaster™ cost me $900 plus the annual filing fee.
 
 On the other hand... Pepperfire cost me a the lawsuit ($30-40K depending on what all you include), we won. The partner filed the trademark $400, we contested $50, He filed his resonse $500, we filed our response requesting an extension pending the outcome of the lawsuit, $250, extension granted, lawsuit not terminated, we filed another request for an extension, $250. We were denied and HE was given the mark. Two weeks later, we won the lawsuit, but he's already been given the mark.
 
 So if you look up Pepperfire a the Trademarks' office, you'll discover that Brooks Pepperfire Foods doesn't own it... yet. Our ex-partner does.
 
 That said if we want it back now having won the lawsuit, we have to file a request for expungement with the Trademarks office, that will cost $500, IF it's cut and dried and they decide based on the lawsuit to expunge... If by the same token, they decide no, he had the right to file and as such owns it, we will have to file in a court of law to sue him to give up his unlawfully acquired trademark... which of course we will probably win, but lawyers and judges being what they are, there are no guarantees and since it already cost $30-40K to prove in court that we owned the company and he didn't, it could feasibly cost another $30-40K to prove we own the trademark and not he.
 
 That said... we're likely to simply wait the ex out. He'll eventually tire of paying for the mark or, we'll get into a financial position where it won't kill us to spend $40 kicking his butt in court and we'll end up with our mark.
 
 Going to the lengths that some companies will go to protect their mark, will we go? Well, at this 
epend on our cash flow... either way, we know that since nobody can prove they've used either of these marks in any country longer than us, we'd win... and the ultimate question is who came first, the chicken or the egg... Also, not using your trademark is as bad, someone who can prove they're actively using the mark can have you stripped of yours if you're not using it... So, it keeps people from simply parking on a mark and preventing someone else from using it.
 
 It gets worse if you're in a situation where you've both been using the mark... you have to prove which one of the two of you has actually behaved as if it were a real trademark... I think those little quirks are the things where a company like Tabasco gets to find itself in a position where it can buy itself into its trademark protections if necessary... And as I said, if you can't afford to do that or if you can, you aren't willing to spend that kind of money... Don't.
 
 Like Jim, we registered ours, not so nobody else could use it, but instead to insure that WE could. Same goes for Pepperfire.
 
 The trick in Trademark law is picking and choosing your battles and making sure you have the data to back it up and if you don't to have the bottomless pit of cash you need to.
 
 Nike is a good example of a trademark purchaser... When they go into a new market they buy their mark from whoever might be using it, even if it's for a purpose other than sports equipment... That way THEY control the mark... It costs some heavy duty coin.
 
 T
 
 
 =====
 
 
 Tina Brooks
 VP Marketing, Peppermaster Hot Sauces <a rel="nofollow" target="_blank" href="http://www.peppermaster.com">www.peppermaster.com
 </a>Brooks Pepperfire Foods Inc. <a rel="nofollow" target="_blank" href="http://www.pepperfire.ca">www.pepperfire.ca</a>
 
 
 Phone: (514) 393-3430
 26 St. Jean Baptiste, East
 Rigaud, Quebec, Canada
 J0P 1P0
 
 
 Network with me on <a rel="nofollow" target="_blank" href="http://www.gourmetbusinessforum.com/">www.gourmetbusinessforum.com</a> -- The premier online business community for food 
000">Many persons have a wrong idea of what constitutes true happiness. It is not attained through self-gratification but through fidelity to a worthy purpose.</font> <font color="#4040ff">Helen Keller</font></em>
 
 
 ----- Original Message ----
 From: "jim@wildpepper.com" <jim@wildpepper.com>
 To: Jim Graham <spooky130@cox.net>
 Cc: chile-heads@globalgarden.com
 Sent: Tuesday, June 3, 2008 9:47:00 AM
 Subject: Re: [CH] Re: Evil corporate types
 
 The cynacism is overwhelming you!  Fight it!!  :-)
 
 Yes- you may have heard about absurd lawsuits, but we rarely hear of
 their outcome.  Firefighters, with too much time on their hands often,
 are constantly sitting around the breakfast table talking about
 imaginary situations we encounter on the street, envisioning getting
 sued for this or that.  Yes- you can get sued for anything these days. 
 HOWEVER, "winnnng" said suit, is an entirely different matter.  I will
 grant that it occasionally happens, but the odds aren't all that
 great... especially under trademark law which is the topic here.  Let's
 not wander off into unrelated areas like product liability.
 
 While sounding a bit vague, Trademark law is fairly clear:  any
 circumstance that can cause reasonable confusion in the consumers' mind,
 due to likeness in name or similarity of mark, can be considered an
 infringement **IF** competing in the same class.  Thus, it would be
 utterly ridiculous (except for some publicity maybe) for Tabasco (sauce)
 to sue Tabsaco (state) or the breweries to sue Boston (city) as they are
 not competing.  Boston (city) also doesn't have a trademark on the name
 Boston, nor does Tabasco (state).  Understanding that, it is entirely
 reasonable then that Boston Brewery goes after Boston Beer under the
 similarity clause.  The law REQUIRES you to defend your mark or loose
 it.
 
 The Budweiser suit is quite a bit more complex than can be distilled
 (pun!) down into a couple of sentences.  I'm very likely
 over-simplifying it as well, but here goes.  Yes- the people in Czech
 having been making various beers for c
er the region, describing a style of beer, rather than
 any one specific beer.  The name has come and gone periodically over
 there, always in GENERAL use, but not SPECIFIC use as a host of
 breweries have variously used the name.  (People in Indiana have been in
 the auto industry for a looong time as well, and part of that includes
 making tires.  This will tie in shortly to the point at hand.) 
 Anheuser-Busch made and trademarked the name "Budweiser" to apply to a
 SINGLE specific beer made by them.  It went without challenge for a
 couple of hundred years.  (People in Indiana were making auto and
 bicycle tires during this period.)  Budweiser went on to be a recognized
 world wide mark.  In an attempt to cash in on this, an enterprising
 Czech brwery tried to recently market a "Budweiser" under the argument
 that the term had been around for years, even though they couldn't prove
 THEIR use of it.  (An enterprising tire maker in Illinois started making
 tires under the brand name of "Hoosier"- which for those that don't know
 is the nickname of anyone from Indiana.)  A poor analogy maybe, but
 workable:  If I were to start making tires now and called them
 "Hoosier", based on the fact that I was a Hoosier and my people had been
 making tires forever, my claim- based on regional, non-specific usage-
 would (should!) meet the same fate as someone trying to cash in on
 someone else's hard work and branding.
 
 We WANT this law!  Imagine how difficult our lives would be as consumers
 if there were 15 different sauces named Tabasco, 20 different
 Budweisers, or 30 different A-1's, all looking remarkably similar in
 appearance and name.  I suspect we'd waste a lot of money, having in a
 hurry occasionally grabbed the wrong one.  Think of the impact on
 business!  I would have absolutely NO incentive to try and increase my
 marketshare, or grow my business, if someone else could just come along
 and name his thing the same as mine and take my customers through
 confusion.  I celebrate the foresight and the entrepenurial acumen of
 these folks!  
t.  It causes me (rather than be resigned and cynical) to have
 BETTER foresight and be more inovative in my strategies.  Competition is
 a good thing :-)
 
 *Never* settle for a one paragraph summary you find on the internet or
 read in the paper!  We all know the media either a) gets it totally
 wrong, b) sensationalizes it for headlines, or c) simplifies it past all
 understanding of the original issue.
 
 Hope this helps!
 
 -Jim
 http://www.StepUpforCharity.org