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Thread: Trademark Issue #2

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    Publishing Mentor dsieg58 is a Premium Member
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    Trademark Issue #2

    You guys seem knowledgeable about trademark law, so I thought I would pose this question. This is a weird one.

    I belong to a Yahoo group. Algaeponics is a slang name this group gave to a certain method of growing algae based on hydroponic methods. When we discuss this method, we refer to it as "algaeponics." Since 2009 there is one member who is always threatening everyone everytime someone utters the word. (I kid you not) If it wasn't so pathetic, it might be amusing. However, their spelling of the word is different. They **SAY** they have trademarked the word "Algeponics" and we can't use it, or use any word like it, or utter it anywhere, at any time. First we tried to reason with them. Saying just because a say "Kleenix" instead of "Tissue" doesn't mean I'm violating the law. That didn't work, so we just basically told them to F#$K off and ignored the idiots.

    Yesterday I got a Cease and Desist letter when once again, I used the term in normal conversation.

    So here is my question...do they even have a legal leg to stand on? or conversely, what can I do to shut them up?

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    Top Contributor crabfoot is a Premium Member
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    Oh, David, which hat should I wear? My "I own a trademark" hat? My "I hate US English" hat? My "I am a microbiologist" hat? My "I also hate twits" hat?

    We hoover the floor in our house with a Dyson vacuum cleaner. Dr Dyson does not object to that, neither does Mr Hoover. Trade marks can be very obscure - one of the most amusing is Osram. It was originally a German trademark, but the amusement comes from two sources.

    One is that the trademark was licensed to GE before WWII, so you can find both US and German ads saying that [effectively] "you can't get Osram lamps because we're supporting the war effort", the other reason is that, in Polish, Osram means "I will shit on you" and also implies "from a great height" - the Germans are still trying to sell lamps into Poland using that brand name.

    From what you say, the term was in common usage in your group before the prat took out a TM on the word. If that is the case, you would only have to prove "common use" before the mark was granted to challenge the validity of the mark. This could be further reinforced if he has not used the mark for commercial purposes yet, and is still trying to find uses. If that is the case, he's talkin loud and sayin nothin.

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    Publishing Mentor dsieg58 is a Premium Member
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    LOL...I don't even think it is an actual word, we just made it up as we went along as we needed a term to refer to what we were talking about. I also agree, a word in common usage is a word. Not a trademark. A word used in conversation in a private chat is also not a commercial application. On the other hand, an idiot is also an idiot, and even an idiot can also sue you. I also think it would be a tough case to make. I was wondering if there is somewhere some other idiot tried to do the same thing, and the case law is available. I would like to post it.

    I did look up the trademark on the link you left. There is one, and it has been trademarked since 2006, so that predates my usage of the word anyway.

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    Marketing Mentor Mikl is a Premium Member
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    Just to confuse the issue, I see someone has registered www.algaeponics.com as a domain name: registered in September 2010; due to expire at the end of this month. But the site just has an empty Wordpress page.

    Mike

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    IANAL

    Using a term in conversation does not constitute trademark infringement. If you were marketing a product with that name, it might be a different story.

    Could you imagine if Ford tries to sure everytime someone mentioned Ford in a conversation?

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    Publishing Mentor dsieg58 is a Premium Member
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    I see someone has registered www.algaeponics.com as a domain name: registered in September 2010; due to expire at the end of this month.
    Yeah, that's me. I own all the worthwhile keyword algae domain names.

    Could you imagine if Ford tries to sure everytime someone mentioned Ford in a conversation?
    Yeah, it's pretty stupid. Below is the notice I received.

    CEASE AND DESIST NOTICE

    PLEASE NOTE THAT ALGEPONICS® IS A REGISTERED TRADEMARK AND MAY NOT BE USED IN ANY SPELLING.

    I love the all caps. This happens every time we use the word in conversation. So she must have Google Alerts set up. We were talking about it so much we set up a separate yahoo group with the same name. So I guess she is having real fits now. I knew it was BS, but after getting threatened for 4 years, it is getting pretty old. Since common sense doesn't seem to be this person's strong point, I'm wondering if I shouldn't slap her with a "Cease and Desist" of my own.

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    Publishing Mentor dsieg58 is a Premium Member
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    I also noticed on the other thread someone said something along the lines of "In order to keep a trademark active a person has to show they have vigorously defended the trademark anytime it is used." I wonder if this is part of their game plan. It is just to show they have laid claim to the term.

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    I imagine that Cornell University's Law Department site is an authoritative source of information about US trademark law. Here's an extract:

    To prevail on a claim of trademark infringement, a plaintiff must establish that it has a valid mark entitled to protection; and that the defendant used the same or a similar mark in commerce in connection with the sale or advertising of goods or services without the plaintiff's consent. The plaintiff must also show that defendant's use of the mark is likely to cause confusion as to the affiliation, connection or association of defendant with plaintiff, or as to the origin, sponsorship, or approval of defendant's goods, services or commercial activities by plaintiff.
    Follow the link and read the whole article to find out more about how "Use", "In commerce" and "Likelihood of confusion" are interpreted.

    Seems to me that the lady is making her lawyer rich for no good reason.

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    Marketing Mentor Mikl is a Premium Member
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    PLEASE NOTE THAT ALGEPONICS® IS A REGISTERED TRADEMARK
    If it's a registered trademark, doesn't it have to be registered somewhere? What I mean is: Doesn't there have to be some sort of registration document, or an entry in some official list (a register?), or some other proof that it has indeed been registered? (I hope I'm making sense here.) If this is right, can you ask the person to furnish the relevant evidence of the registation?

    Also, does the Cease and Desist Notice spell out what would happen if you don't cease or desist?

    Mike

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    Publishing Mentor dsieg58 is a Premium Member
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    Doesn't there have to be some sort of registration document, or an entry in some official list (a register?),
    She does. She does has a registered trademark, UNDER THAT SPELLING. But I also haven't found any PRODUCT associated with that name. So no commercial involvement on her part, or ours.

    So Chabrenus is right. It would fall under common use. Under the Common Use of the word, in our spelling, and in our context.

    Also, does the Cease and Desist Notice spell out what would happen if you don't cease or desist?
    Nope. What you see is what I got. This one was sent to me personally, as well as 4 other people involved in the conversation. All her other objections had been public on the forum.

    "Likelihood of confusion" poses a question. But absent any commercial intent, on her part, or ours, I don't see how it would apply.

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