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Discussion Starter #1 (Edited by Moderator)
Hi....

A little while back I posted a note about a run-in I was having with the giant French Connection Ltd clothing company (of fcuk fame). I was attempting to register "fcek the irish connection" as a trade mark here in the UK and FC were getting quite irate about it and tried to block the move with the UK Patent Office (as background, 'feck' is a mild irish expletive).

I'm a one-man band (wot4.co.uk) so had no real chance of winning as FC made it quite clear that they'd be taking this beyond the patent office if they lost there. I had some nice messages of support off here and promised I'd post an update, so here it is.

The UK Patent Office decided that there would be confusion between the two marks, or at least a risk of assumed association, as far as clothing was concerned but that there would NOT be confusion with some other goods (oddly, these were walking sticks, animal hides and mobile phone accessories!!). At this point, costs were starting to rise, but FC also knew that if I continued with my application for (say) mobile phone accessories, it might cost them a fortune to oppose and they might not win. So I negotiated a deal where no cotsts were awarded, I could sell off exisiting stock and (best of all) they agreed to allow me to keep "the irish connection" as a trade mark in its own right.

I guess it's a kind of victory for the little guy. I'm now working on exclusive "the irish connection" designs..........

Andy Carter
 

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Interesting!

I remember a couple of years ago the Conservative Party (I think the Youth branch) had a series of ads along the lines of "Fcuk B-liar", and they were sued (and settled out of court I think).
 

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Discussion Starter #3
Yes, French Connection are notoriously litigious. Odd really as they only registered fcuk in 1997 and there was a band around in the early 90's called Family Cat UK who used to do FCUK t-shirts. Of course, they never got around to registering it as a trade mark and the rest, as they say, is history! You can still get those 'Bliar' t-shirts although not with fcuk on them.
 

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The UK doesn't have any common law trademark laws? Here in the US, even if you don't trademark your name, the law says you own it in whatever market you do business in. Someone wouldn't be able to use their registered trademark in your market, it you had it first. I assume a band would do alot of traveling and if they had common law trademark laws in the UK, fcuk, could be in some jeopardy. Again, that's if they do, I don't know.
Anybody in the UK know of common law trademark laws?
 

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Its not that simple (US). Do a search on the TM dispute between GLo by JLo and Glo. Some lady had been using glo for a couple of years without trademarking it. Years later Jennifer Lopez comes out with Glo by Jlo and the case is in court.
 

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Just because it is in court, does not mean it's not that simple. If I start selling shirts in 2006 in the US that say NIKE for example, and Nike finds out about it, they are going to send me a C&D. If I continue, they are going to take me to court. I won't win. Why? Because the law says I can't use someone else's trademark after they register it. That's simple. The reverse is also true. The law says that if I started selling shirts with Nike on them in my hometown of Nashville before Nike applied for their trademark registration, then they were granted registration status, they still would not be allowed to sell Nike in Nashville. If they did, I could send them a C&D, then take them to court. Simple. Just because to sides disagree about an issue, does not make the issue complicated. The law is simple on the issue. Use your mark in your market, you own it in that market. As long as you were the first to use it there. I will check this case out in depth, but I don't know who is sueing who. If the lady was using it first, I hope she's the one sueing, because J Lo's people should have known about this lady. When you file for the trademark, they even ask you to affirm the fact that you have gone through reasonable measures to assure that noone has a common law trademark. If this lady can prove that she was using it before J Lo, she could easily prevail in the case. But make no mistake, simple things get sued over all the time!
 

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I did some checking on that case. Even found a copy of the lawsuit filed by Glow Industries here.
That case is somewhat different than the situation I was referring to. I was referring to the fcuk t-shirts. My point being that if you were using a mark on a specified good, then someone else would not be able to use the exact mark on the same speficied good in your market. J.Lo attached her name to the "GLOW" to make it different. This is where the lawsuit comes in. At dispute is whether adding J.Lo to the glow name makes it different enough and are the goods the same. Glow Indstries brought the suit against J.Lo, alleging that she infringed on their common law trademark.
They claim they were using the mark before J.Lo applied for registration of her mark. It was supposedly announced at a huge function in New York with national media present and distributed nationally, before J.Lo applied for the trademark of Glow by J.Lo. So a judge has to determine if the goods are the same, and if so, is adding "by J.Lo" good enough to keep the consumer from confusing the two. I agree it is always best to trademark your name, but J.Lo and/or her representatives had to know that this company existed and that the similarity of their products would pose a problem, before they applied for registered status. That is exactly what the common law trademark law was put into effect to do. To protect those that may choose not to register their mark, and still give ownership of a mark in a particular classification in a given market. Still seems very simple to me. But wasn't my point about the fcuk shirts. Because it is very clear that if J.Lo didn't add the "by J.Lo" to the product and that the products are somewhat different(GLOW Industries sells bath a body products, J.Lo sells perfume) that it would be an open and shut case because of the common law trademark laws. That is probably why she added the "by J.Lo", so that if there was a lawsuit brought by GLOW Industries, she would at least try defend it by saying that it is different, and the "by J.Lo" would not cause confusion for the consumer. I agree with you advising people to trademark their name, and this is why I suggest people get an attorney when they do. GLOW Industries should not have waited so long to apply for registration and J.Lo probably should have gotten some better advice. It is going to cost them both some money. Sorry so long!
 

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The law says that if I started selling shirts with Nike on them in my hometown of Nashville before Nike applied for their trademark registration, then they were granted registration status, they still would not be allowed to sell Nike in Nashville. If they did, I could send them a C&D, then take them to court. Simple.
Actually, it's not that simple at all.

There was a case in my hometown where a pizza place was called something like Pizza Pizza for years. Soon, Little Caesar's pizza came to town and brought a lawsuit against the original Pizza Pizza place (and won) and the original place had to change their name.

Just because you use it, doesn't mean you have a common law trademark. If you're serious about wanting to protect your brand, you should register a trademark, but you have to be willing to be like FC and defend it or risk losing your mark.

You should also be talking to a lawyer if you have law questions (unless coming out swinging is offering free legal advice ;) )
 

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Interesting.

This all reminds me of a famous case where Nissan Motors is suing a man whose last name happens to be Nissan. Remember when Nissan used to be called Datsun?
This guy has been using his last name for business purposes long before Datsun changed their name to Nissan, but he is being sued anyway by the corporation.
If you're interested, here is the link...

http://www.ncchelp.org/The_Story/the_story.htm

This is costing this guy a lot of money to defend the use of his own last name. Nothing is ever really easy when it comes to interpreting the law, even if you're sure you are right.
 

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Rodney,
I'm not familiar with that case. But again, because there is a lawsuit and someone even loses, it does not mean that the concept is not simple. The law could not have been applied correctly, which happens all the time. Judges can rule however they want, does not mean they are right. My point is the law is simple. Probably one of the simplest that has to do with trademarks. Just like the nike example I gave. The law is very clear. If you are using a mark in a particular market, noone, even if they have a registered trademark can use your exact mark in your market. It doesn't matter how many lawsuits a company brings or even if the judge rules a different way than the law states(like that's never been done before), it doesn't change the simplicity of the law. It should be an open and shut case for the court if this were the situation, but like I said, the courts can make a simple situation complicated if they so choose. And no, no free legal advice! Unless you want to lose.:eek: But Rodney, just using is exactly what common law trademark is. Just using it gives you the common law trademark. What would be better is if the courts weren't going to uphold it, they should just do away with it.
 

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It doesn't matter how many lawsuits a company brings or even if the judge rules a different way than the law states(like that's never been done before), it doesn't change the simplicity of the law.
I think that and the fact that the law can be interpreted so many different was means that it's not that "simple". That's my opinion anyway.

If the law was "simple", it wouldn't need complicated law cases and confusing rulings. Because the law can be interpreted in different ways and because different rulings set precedents seems to indicate to me that it's not really simple at all, and it would make sense for someone to get real legal advice if they are trying to protect a trademark.

That's just my opinion though :)
 

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Come to Australia and you'll find Burger King is called Hungry Jacks. When they came here in the 70s, there was a little man with a little store, who had TM'd the name here. There's been a complex court case since the lapsing of trademark (you can read about it at wikipedia).

I think Hungry Jacks is a better name anyway :)
 

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monkeylantern said:
I think Hungry Jacks is a better name anyway :)
I agree. I'd much rather eat at the establishment of a humble Jack who shares my base hunger and the desire to eat some simple fare, than an imperial ruler who seeks to create a lasting dynasty through the conquering of my prospective foodstuffs.
 

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Rodney, I see what you're saying. My only point is the simplest things can be made complicated by anyone. Either through ignorance of the law, or by unlawfully disregarding it. It doesn't change the simplicity of the law itself. Because the law is clear. You can take a simple law such as "stop at all stop signs" and have a complicated court case about it. But it doesn't change the simplicity of the law that says "If there is a stop sign, stop at it".
But we do agree on one thing. Get an attorney. A very competent one. Because people will take the simplest things and make them complicated...that will cost a lot of money!
 

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Discussion Starter #17
Glad I stimulated some debate.....I do recall here in the UK, there was an ice cream seller with some italian name like 'giovanii who sold Giovani's ice cream. One of the big manufacturers then registered Giovani as a trade mark. The case went to court and the little guy won but only to the extent taht he could carry on in that area and had been doing what he was doing for many years. Sounds similar to the pizza case mentioned but with a different outcome. I guess unless you have the legal protection of a registered trademark, you are takingyour chance with the courts and, of course, it will cost lots and lots of money. The huge companies check every trademark registered that might be similar to theirs to see if they an object. That's what French Connection did with me. As Rodney points out. Registering something distinctive is a good idea as it doesn't cost all that much and can give you country, if not world -wide protection.
 

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That's the way it is supposed to work here in the US. That's what the law is in place for. That's exactly what should happen in the J.Lo case and if the law is applied, what will happen. J.Lo clearly knew about the GLOW company before she applied for her trademark. She is on record as having purchased the product directly before applying for her trademark.
I guess unless you have the legal protection of a registered trademark, you are takingyour chance with the courts and, of course, it will cost lots and lots of money.
Even if you have a registered trademark, you are taking your chances if you don't diligently seek if someone has a common law trademark. That's J.Lo's problem now.
Registration doesn't automatically give you protection. The attorneys at the trademark office don't do common law trademark searches. They leave that to the applicant. That's why they have the applicant attest to the fact that they have done the common law trademark search and found that they have a registerable mark. If it is found that the trademark office granted registration to an applicant, but the applicant did not do a reasonable search to determine that no others hade a mark that would cause confusion, the registration can be revoked. That is why GLOW Industries decided to sue. To protect their common law trademark. And seems like they have a very good case.
 

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Solmu said:
I agree. I'd much rather eat at the establishment of a humble Jack who shares my base hunger and the desire to eat some simple fare, than an imperial ruler who seeks to create a lasting dynasty through the conquering of my prospective foodstuffs.
I imagine he's married to Dairy Queen.

I'd much prefer a Burger Prime Minister, democratically elected by pickles.
 

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monkeylantern said:
I imagine he's married to Dairy Queen.

I'd much prefer a Burger Prime Minister, democratically elected by pickles.
Exactly. I mean who appointed this monarch anyway? Maybe it's time for a revolution! Ketchup in the streets! Coleslaw splattered to the rafters! DOWN WITH MEAT BASED FASCISM!

As for Common Law trademarks... Most law is based on codifying principles, and he who has the most formality wins. Common Law basically goes against that, as it's not codified - it's just a flimsy series of precedents set by judges who were forced (or chose) to make a decision outside of the scope of the simple written law. Judges are meant to be able to interpret the law - not just because it isn't always clear, but because if societal values are changing then the role of the court needs to change with it. It allows cases to set a precadent for the law to slowly move away from past values without having to pass new legislature. It also helps indicate which way legal trends are headed so that the legislative branch can promulgate appropriate laws (i.e. not just take a wild guess at what might be required for the ever-changing body of law). It's especially useful when dealing with a new area of law that wasn't previously accounted for, but not so useful when dealing with areas that have their own well established laws and precedents (i.e. formal Trademark law). All common law is though is case history and precedent set by judges. Since it's not codified, a judge can't very well be making a "wrong" decision by ignoring it in favour of codified laws. I think we're already seeing a trend away from respecting a priori rights, and more to those who follow due process (or have the biggest bank account as the case may be). Unlike actual laws, Common Law is only binding if a judge continues to make it so. You shouldn't rely on a legal precedent in running your business, but rather follow the real law (if they're in conflict you've got a problem, but most of the time it's only a matter of common law maybe saving your butt if you've been lazy, versus never really having to concern yourself with it because you did things properly). Common law steps in where the written law is inadequate, but often that's because the written law overlooks the fact that nobody outside of a judge and the occasional lawyer pays any attention to it - those who do pay attention will ultimately profit over those who don't though ("Those who live by the sword will be shot by those who don't" is essentially the principle here). The law is not simple unless you choose to oversimplify it. The suggestion that judges overcomplicate things out of ignorance of the law is absurd. For one thing if it was all so clear cut then they wouldn't be making controversial verdicts - there'd be no room for them making an error. They may make judgments that we don't like, or make decisions based on political motivation - but they are not ignorant of the law. By definition, if a judge makes a ruling he is right until such time as the decision is overturned by a higher court. Common Law being what it is though, I'd never rely on it. I'd turn to it if I needed it, but given it's inherent unreliability I'd aim to never need it in the first place.

And why is it we never hear of the rest of the Burger Royal Family anyway? I don't think we're getting the whole truth on this important issue! The public has a right to know!
 
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