An Aside . . . . Trademarks and VeRO . . . #4
Post #4
This is an aside based on things that have happend in the last 24-48 hours.
Last summer [yup, a year ago] we filed for Federal registation of three trademarks:
1. Circle X Ranch
2. Johnny West Adventure [red/black logo]
3. Best of the West [the swoopy dark orange/brown logo]
With a couple of small amendments, all three applications were approved for 'publication for opposition.' This means your marks are published in a governmental catalog for the world to see and anyone who thinks they could be damaged by your use of the trademark can file what's called 'an opposition.' This is a short legal document [1 - 2 pages] that starts a miniature lawsuit at the federal level over the validity of the trademark and application.
It was kind of cool seeing our marks published! But, now it was time to wait for 30 days.
Jay's attorney, stepped in and filed on all three marks. Did he step up and file an opposition that we could stand up and fight? Nope, he filed for a continuance . . . A delay . . . Per the rules, he got an additional 30 days to file his opposition.
So, we wait . . .
At the end of the thirty days, he files again. Did he file his opposition so we could answer and get this thing moving towards a resolution? Nope, he filed another continuance and got 60 days this time.
These delays were pretty frustrating. We could use the trademarks, but couldn't really claim them as our own. We believe that was the other side's intention all along. To delay and irritate.
During this time, they offered us a settlement that was completely insulting. We declined and continued to wait.
Fortune rewards the patient . . . .
At the end of the sixty days [90 days total - 120 if you count the 30 we waited during publication], Jay's attorney let all three filing deadlines expire . He made a half-hearted attempt to get more time on JWA, but was denied and told that they had no additional remedies. We believe he didn't file the oppositions because he didn't have the necessary grounds.
As a result, American Plastic has given up all rights to oppose our registrations at the federal level. The time for anyone else to step up and try and oppose us has passed. These trademarks will mature into registrations [ya know, the 'R' inside the circle] after the paperwork finishes getting through the federal maze.
As a result,
Circle X Ranch [TM]
Johnny West Adventure [TM]
Best Of The West [TM]
are trademarks of Toytrackerz LLC. That's Noah and I.
One of the responsibilities of trademark ownership is that you have to police how the marks are used. As a result, we have had eBay and CafePress listings removed for someone who makes reproduction boxes, t-shirts and posters bearing the JWA logo. Failure to do so could result in damage to our trademark rights. It was a business decision and a legal decision and I would do it again tomorrow and will continue to do so.
I want to remind people who started this fight. It wasn't us. Instead of contacting us and discussing an amicable resolution, they sent us the Cease & Desist letter. We also received copies of emails and messages that our opponents were saying things like 'we were headed for a brick wall' and 'we would be brought down'.
Well . . . I'm not going to cooperate by ceasing, desisting and so far every brick has bounced off of us like it was made of foam rubber. A law review article put it best, 'Be careful when you send a Cease & Desist letter . . . it could be you that is made to stop'.
More later - Terri
posted by Terri Coop @ 5:50 AM
3 comments
3 Comments:
Terri,
Can you tell us the difference between a wordmark and a logo. Are workmarks Logo's? For example, does TTZ own the words "Johnny West Adventure" or only when it is used in the Johnny West Adventure logo with the colors and font style?
Good question Scott! The answer is a little convoluted. We are in the last, final, review stage for registration of the JWA logo. It is also already a registered logo in Kansas. No one has standing to oppose our registration of the JWA logo.
To remain valid, it doesn't have to be in the exact form. It is still protected if we change color or alter the font. I could also defend it against anyone who used the words 'Johnny West Adventure' as a tradename in word or logo form on the grounds that it is similar enough to be misleading.
For example, the trademark office would not allow anyone else to register 'Johnny West Adventure' in either word form or logo form, even if it was completely different.
JWA is distinctive enough to stand as either a logo or word mark. The real difference comes with more common words. Take the word 'BIG'. I most likely could not register that word alone as a mark. It's too common, not sufficiently distinctive and, depending on my product, may be merely descriptive of my item. However, if I took the word and morphed it into some fanciful and distinctive logo, I might then be able to register it.
Make sense?
This issue has been litigated [no surprise]. A company had a logo that it had used for many years. They decided to redesign it and make it look more modern. Some one tried to claim the company had abandoned the old logo. The court said that as long as the 'message' of the tradename remained the same, ie. they didn't change the words, the logo was still valid and protected.
Our JWA logo is fairly low key. So, I could change the color, alter the font or change the alignment [ie. have the letters vertical or diagonal] and not lose the essence of the trademark. I could also defend the mark against anyone else who did the same thing.
Hope that answers your question! Terri
Absolutely!
Great answer, that's kinda what I thought but wanted to hear it in 'lawyer speak' ;-).
Thanks again,
Scott
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