Intellectual property & common words

[2Goldens]

Hello,

This is my very first post in this lovely community! I've been busily reading lots of posts here, and it's wonderful to see so many knowledgeable (and very friendly!) people assisting others in so many facets of business.

I have a question which I haven't been able to find an answer to; so apologies it it's been answered elsewhere

By way of some background, we've been running an online business for close to 4 years now, and to our surprise we received a 'cease & desist' email from a competitor with threat of supreme court action etc.

We searched for their name on the IP TM Check Register, and their 'trade mark words' include 8 common words, including their 2 word business name.

Their contention is not with our business name (which is very different to theirs), they do not like that we are using 3 of the (common) words which they have registered 'in our advertising'. We are also not to use any of those words in any order at all, with threat of litigation.

I hope that you understand, but I don't want to mention the actual name/industry/words here in light of their correspondence at this stage....however, as an example:

Say they are called "Mattresses Online" they have also registered the words "mattress" "supplies" "online"...they are saying we are not allowed to advertise our site using any combination of those 3 words.

I couldn't work out what they meant by 'advertising' - but 'think' they are referring to our Meta Tag Header - so that those words come up in a Google search (incidentally, when one does a Google search of those 3 words, probably 1/2 the businesses in the field in question have those 3 words in their meta tag header.)

So - I if am indeed in the business of selling mattress supplies online...do I have to revert to marketing my wares as "cushiony things you sleep on & associated items via a communication device called the world wide web"

Many thanks, and apologies for the long post - just feeling a bit bamboozled!

[JacquiPryor]

Hi 2Goldens...

Please note that the following is general information - without having seen your business/theirs or the letter it's hard to be specific...

Several things need to be considered to determine whether they have the right to take any action, and to determine if you are 'infringing' their trademark:

1. Infringement generally occurs when a persons uses 'something' that's deceptively similar and not registered in a manner that is considered 'use as a trademark' in connection with the same/similar goods or services to 'something' that someone else has registered. Deceptively similar basically means, is it likely that consumers will be confused between you and the other people because of the similarities?

2. However - there are clear instances when you will be taken not to be infringing including - if you actually used it before they registered or first used (which ever is earlier) and also if you are merely indicating a kind, purpose, quality or other characterstic of the products/or services.

Using the "mattress" example, yes you could say that you sell mattress supplies online without fear of breaching rights generally - a) you are indicating a kind/quality/characterstic of products and services and b) this wouldn't necessarily be considered 'use' as a trademark, which is key to any infringement matter.

I am more than happy to review the actual letter you have received and your business/theirs to provide some more specific thoughts if you like? Please email a copy to jacqui@mmwtrademarks.com.au and I will look over and let you know what I think.

[2Goldens]

Jacqui,

Thank you so very much for your speedy reply & for your offer for me to email you; shall do so shortly.

Thanks again!

2Goldens

PS/ I just happened to be reading your Small Business Insights interview when your post came through

[JacquiPryor]

Hi 2Goldens - received your email, thanks - and have replied (just in case you see this post before the email )
Speak soon.

[sam_leader]

Hi 2Goldens,

Well I think that's what's called a successful first interaction on the Flying Solo forums, wouldn't you say?!

I hope you'll continue to find it useful.

Welcome and good luck,

Sam on behalf of the Flying Solo team

[JaneB]

Of course we are all dying to know the details!

Reminds me of the words "shabby chic". They were trademarked as a term by an American outfit but it ended up in court when they aggressively pursued ebay sellers who used the words in their descriptions.

I think the "owners" lost the case since they were terms used in the decorating industry long before they decided to claim them.

[JacquiPryor]

Well we can't give away all the details just yet

As to Shabby Chic - this remains a registered trademark still (at least in USA and Australia, but I believe also other countries). There's a lot of discussion over it and it all appears to be eBay relevant... The action was brought against eBay sellers and (it seems) most of the 'complaint' is related to the way eBay handles complaint) about infringingement (or, more so how they handle an appeal about such a complaint. Ultimately, the case was 'settled' rather than one or the other winning/losing.

There are things people can do to stop trademarks becoming 'generic' or too common - a good example is the owners of "Bubble Wrap" - we have all come to use this somewhat commonly, but one thing they do is contact any trademark applicant (at least in USA) who might have called their products 'bubble wrap' to request they amend to read as "air encapsulated cushion plastic wrap material" or similar. By stopping people using their trademark as a descriptive term they maintain some control that bit longer.

Anyway - sorry, totally side-tracked this thread woops