[Comin'OutSwingin]

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?

 

[Comin'OutSwingin]

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!

 

[Comin'OutSwingin]

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!

 

[Comin'OutSwingin]

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. 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.

 

[Comin'OutSwingin]

Wow. I didn't know that. I wonder what made them choose the name, Jack. Hungry Jack is a brand of pancake mix here in the US. It is interesting, though.

 

[Comin'OutSwingin]

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!

 

[Comin'OutSwingin]

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.

 

[Comin'OutSwingin]

Solmu,
You are correct about most common laws not being codified, but this does not apply to what I have been referring to as "common law trademarks". A better term would be unregistered trademarks because the same law that was enacted to protect registered trademarks also protects unregistered trademarks(in the US). It is called the Lanham Act. Before the Lanham Act, it was just common law, and that term for an unregistered mark stuck(common law). But, the Lanham Act sought to address the common law problem and make it a "codified" law. So judges can make a "wrong" decision if they go against what this law says. And I don't know why you say that believing judges complicate things out of ignorance of the law is absurd. I don't know how it works in Australia, but judges here aren't infallable or omniscient. There were cases here where bench judges were charging motor vehicle offenders unlawful fine amounts. There were hundreds of cases where people sued because it was unlawful for the amounts to be given to a person unless a jury fined them the amount, not a judge. When the judge was asked about it, his defense was that he didn't know that he couldn't do it. The people who were overlyfined easily won there cases. Because the Tennesse law "clearly and simply states" that an offender can not be fined an amount over $50 unless a jury imposes the fine. Simple law, judge was ignorant of it. It was also very controversial, because the judge was ignorant and complicated it. His own admission.

I think the other foods (fries, chicken sandwiches) should take up arms and revolt! Overthrow the whole kingdom!

 

[Comin'OutSwingin]

I got you!