Got a fun message today

mkstewartesq said:
Just to add some gloss here:

I’ve not read the actual Reverb policy and question to see whether it talks about “trademarks“ or only “registered trademarks”. But, at least in the U.S., you absolutely have legally protectable trademark rights in a brand or product name under federal law even if you never attempt to register it with the USPTO or any corresponding state trademark authority. All that is needed is that you use the word or phrase to identify your product or service in commerce (i.e, you are offering it for sale). This is what the law terms to be “commonlaw trademark rights” and they are explicitly protected under federal law. In fact, if you attempt to register a trademark that someone else has already used in commerce without registering it, they have the right to oppose your trademark application or to get your trademark registration canceled (if you happened to get an actual registration). So the fact that this company didn’t apply for or get a trademark registration absolutely does not mean they don’t have a legally protectable trademark, so long as they can show that they’ve been using the name on products that they have been offering for the sale in the U.S.

Again, if the relevant Reverb policy limits this protection to only “registered” trademarks, that may be a different matter, as this would require that the trademark at issue be covered by a current trademark registration at the USPTO (or, at a minimum, under the trademark registration scheme of a given U.S. state).

Source: me, US attorney practicing trademark law since 1998. I often have to burst clients' bubbles when they tell me that they searched the USPTO database and conclude that the trademark they want is free for the taking just because it is not federally-registered.
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That's really cool info, thank you for the insight. In the end I complied with Reverb's policy since they are the governing platform, but I try to do research and make sure I stand on firm ground. The reverb policy does not specify registered trademarks. The exact wording is just "trademarks," so having read your post, my argument was unsound.

With the common law trademark policy, is there any benefit to registering a trademark? When I was searching, I found a few other registered trademarks with the same name as we are discussing here, but for different businesses. Is there any reason one of these would prevent him (or anyone) from registering the same product name, but for a different business entirely? Ie one that would never be a competitor because it's in a different field (cookware, for example)

Also, other pedal and music companies do have registered trademarks that showed up. Is there a reason these people went thru the registration process and my guy didn't? Other than the cost of registering, I'm guessing. I'm asking not to discredit the maker of the original pedal, but because it's something I may want to do someday.
 
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LukeFRC said:
to be fair to him. That's a fair ask, especially if it's in the title.

Also I think some of US trademark law requires you to actively defend your trademark in order to keep it - so he kinda HAS to ask you that.

but you could put in the listings something like "buffer portion of the circuit can be compared to the EUNA, but with a more effective power supply unit designed for common pedalboard power supplies and my own optimised part selection" or something like that, which is harder to argue against.
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That's a good idea. I removed his names from my listing entirely. Again, he was fairly polite, not at all a flame war like is so common. There were parts of his messages that didn't add up, but that's par for the course with any argument.

I changed around the wording to communicate that it doesn't contain audiophile quality components, which is reflected in the price. I'll see how that goes and then adjust later on. I like your "inspired by [his pedal] approach. I was trying to figure out how to keep the name in the description so my pedal will show up in searches. For now I have something like "inspired by the company with numbers in its name. Think 28+1 or 30-1. You do the math" which won't show up in searches for the Euna, but I want to see how that goes for a bit.
 
falco_femoralis said:
That's really cool info, thank you for the insight. In the end I complied with Reverb's policy since they are the governing platform, but I try to do research and make sure I stand on firm ground. The reverb policy does not specify registered trademarks. The exact wording is just "trademarks," so having read your post, my argument was unsound.

With the common law trademark policy, is there any benefit to registering a trademark? When I was searching, I found a few other registered trademarks with the same name as we are discussing here, but for different businesses. Is there any reason one of these would prevent him (or anyone) from registering the same product name, but for a different business entirely? Ie one that would never be a competitor because it's in a different field (cookware, for example)

Also, other pedal and music companies do have registered trademarks that showed up. Is there a reason these people went thru the registration process and my guy didn't? Other than the cost of registering, I'm guessing. I'm asking not to discredit the maker of the original pedal, but because it's something I may want to do someday.
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It’s a good question.

You get trademark rights if you are the first to use that trademark on a specific product or service. But registering the trademark can give you significant additional benefits. Here’s why:

Commonlaw trademarks are only valid in the geographic areas in which you are actually advertising and selling your goods. You don’t automatically get trademark rights in places where you haven’t actually used the trademark to offer or sell goods.
  • Example: I live in Georgia – let’s say I started using a trademark but only sold my goods in Georgia and Alabama. If I was the first to use my trademark in Georgia and Alabama, I can stop others from using a similar trademark in Georgia and Alabama. But I can’t stop someone from using the same trademark in areas in which I haven’t used the trademark. So I can’t stop someone in California from using the exact same trademark, except when they start selling their goods into Georgia and Alabama where it conflicts with my trademark. Indeed, they could stop me if I tried to use my trademark in California because, in a legal sense, between the two of us, they were the first to use that trademark in California. So the end result is that I can block them in Georgia and Alabama, and they can block me in California.
When you federally register a trademark, you are protected nationwide (across every state in the US), even in areas in which you haven’t actually started using the trademark yet.
  • So, continuing my example: if I federally registered my trademark, I could stop someone from adopting the same trademark in California even if I haven’t gotten around to actually advertising or selling my own products in California yet. The registration effectively reserves the trademark to me across the whole nation, so I can expand my geographic markets over time without worrying about running into conflicts in a given area.
So that’s the biggest reason that people register trademarks – to go ahead and “lock up” the trademark all across the country so they don’t run into problems later. (There are other additional benefits but the nationwide protection is the most significant benefit.)

Hope that helps,

Mike
 
mkstewartesq said:
It’s a good question.

You get trademark rights if you are the first to use that trademark on a specific product or service. But registering the trademark can give you significant additional benefits. Here’s why:

Commonlaw trademarks are only valid in the geographic areas in which you are actually advertising and selling your goods. You don’t automatically get trademark rights in places where you haven’t actually used the trademark to offer or sell goods.
  • Example: I live in Georgia – let’s say I started using a trademark but only sold my goods in Georgia and Alabama. If I was the first to use my trademark in Georgia and Alabama, I can stop others from using a similar trademark in Georgia and Alabama. But I can’t stop someone from using the same trademark in areas in which I haven’t used the trademark. So I can’t stop someone in California from using the exact same trademark, except when they start selling their goods into Georgia and Alabama where it conflicts with my trademark. Indeed, they could stop me if I tried to use my trademark in California because, in a legal sense, between the two of us, they were the first to use that trademark in California. So the end result is that I can block them in Georgia and Alabama, and they can block me in California.
When you federally register a trademark, you are protected nationwide (across every state in the US), even in areas in which you haven’t actually started using the trademark yet.
  • So, continuing my example: if I federally registered my trademark, I could stop someone from adopting the same trademark in California even if I haven’t gotten around to actually advertising or selling my own products in California yet. The registration effectively reserves the trademark to me across the whole nation, so I can expand my geographic markets over time without worrying about running into conflicts in a given area.
So that’s the biggest reason that people register trademarks – to go ahead and “lock up” the trademark all across the country so they don’t run into problems later. (There are other additional benefits but the nationwide protection is the most significant benefit.)

Hope that helps,

Mike
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Is the trademark per sector basis as it is here in the U.K. (and EU?)
Like I think I could bring a cosmetic product out, like a reptile based oil, and call it EUNA if I wanted as there’s no chance that a cosmetic product and a music product would get confused.

In other crazy things I found out through work, unlike the rest of the world where the company submitted a patent for something with me listed as one of the inventors, US patent office needed physical bits of paper to be signed! Mad
 
LukeFRC said:
Is the trademark per sector basis as it is here in the U.K. (and EU?)
Like I think I could bring a cosmetic product out, like a reptile based oil, and call it EUNA if I wanted as there’s no chance that a cosmetic product and a music product would get confused.

In other crazy things I found out through work, unlike the rest of the world where the company submitted a patent for something with me listed as one of the inventors, US patent office needed physical bits of paper to be signed! Mad
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Yes, it’s essentially the same in the US (and pretty much anywhere else). I was trying to keep things simple.

But the whole thing that trademark infringement law tries to protect against is consumer confusion – a consumer who trusts a given trademark for a certain type of goods (i.e., when we see the name PedalPCB on circuit boards, we trust the quality) being “tricked“ into buying similar goods from a third-party who uses a similar trademark on those goods. So determining trademark infringement actually involves comparing two factors:

- the similarity between the two trademarks and
- the similarity between the goods and services offered under each trademark.

If the trademarks aren’t really similar, there’s no infringement even if they are used on identical goods. Similarly, even if the trademarks are identical, if the goods and services are so different that no reasonable consumer would be confused into thinking one company offered both products under the same trademark, there’s no trademark infringement.

A good hypothetical example would be Chanel – nobody who purchases Chanel perfume is going to be confused by someone else using Chanel on automobile tires because a reasonable consumer wouldn’t mistakenly believe the perfume company sells automobile tires under the same trademark, and no reasonable consumer would mistakenly buy the automobile tires based on the reputation for quality of the perfume company.

Mike
 
mkstewartesq said:
Yes, it’s essentially the same in the US (and pretty much anywhere else). I was trying to keep things simple.

But the whole thing that trademark infringement law tries to protect against is consumer confusion – a consumer who trusts a given trademark for a certain type of goods (i.e., when we see the name PedalPCB on circuit boards, we trust the quality) being “tricked“ into buying similar goods from a third-party who uses a similar trademark on those goods. So determining trademark infringement actually involves comparing two factors:

- the similarity between the two trademarks and
- the similarity between the goods and services offered under each trademark.

If the trademarks aren’t really similar, there’s no infringement even if they are used on identical goods. Similarly, even if the trademarks are identical, if the goods and services are so different that no reasonable consumer would be confused into thinking one company offered both products under the same trademark, there’s no trademark infringement.

A good hypothetical example would be Chanel – nobody who purchases Chanel perfume is going to be confused by someone else using Chanel on automobile tires because a reasonable consumer wouldn’t mistakenly believe the perfume company sells automobile tires under the same trademark, and no reasonable consumer would mistakenly buy the automobile tires based on the reputation for quality of the perfume company.

Mike
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@mkstewartesq You're a lawyer? Who cares about trademark law, I want to see all your PRS's.......... :p
 
So, where can I get this men's parfum you mention, MkStewartEsq, this — "Chanel-Plier's Eau de Cologne Burning Rubber"?
 
How does the internet play in to the geographic aspect of the common law trademark? Ie if I'm selling something on the internet and do not have a registered trademark for my product, is my common law trademark only valid in the area in which I reside? Or can I influence others who may be based on the other end of the country?

If I'm selling on the internet and not at a store front, does the registration process give me any extra protection?
 
falco_femoralis said:
How does the internet play in to the geographic aspect of the common law trademark? Ie if I'm selling something on the internet and do not have a registered trademark for my product, is my common law trademark only valid in the area in which I reside? Or can I influence others who may be based on the other end of the country?
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That’s still a bit of an unsettled question but the general prevailing view right now is that simply putting a website or Internet presence out on the Internet that anyone from anywhere can access doesn’t mean that your trademark is protected everywhere. Establishing trademark rights in a given area requires you to be more purposeful as far as targeting or dealing with that geographic area then simply putting up a website that someone from that geographic area might or might not stumble across.

Just at a high-level, your common law trademark “geographic” areas would most likely consist of the specific areas in which you could prove a customer who bought from you resided (i.e., records showing you shipped an order to a specific geographic area) or some other proof that you specifically directed your advertising to a given geographic area (you went there and advertised your products at a trade show, or you sold your products on consignment at music stores in the area, or you ran a special like “this weekend only, Michigan and California residents 10% off”).

So the burden would be on you to prove which areas your trademark had actually been “seen” in (for lack of a better term). I don’t even think Web server logs that happen to show IP address visits from different parts of the country would be persuasive evidence in the absence of some proof that you did something more to specifically direct your advertising toward those parts of the country

So, yes, having a federal registration would still be a benefit because it would protect you in all the places in the US where you may not have actually made a sale yet or can’t prove that you purposely directed your advertising activities toward that area.

Mike
 
mkstewartesq said:
That’s still a bit of an unsettled question but the general prevailing view right now is that simply putting a website or Internet presence out on the Internet that anyone from anywhere can access doesn’t mean that your trademark is protected everywhere. Establishing trademark rights in a given area requires you to be more purposeful as far as targeting or dealing with that geographic area then simply putting up a website that someone from that geographic area might or might not stumble across.

Just at a high-level, your common law trademark “geographic” areas would most likely consist of the specific areas in which you could prove a customer who bought from you resided (i.e., records showing you shipped an order to a specific geographic area) or some other proof that you specifically directed your advertising to a given geographic area (you went there and advertised your products at a trade show, or you sold your products on consignment at music stores in the area, or you ran a special like “this weekend only, Michigan and California residents 10% off”).

So the burden would be on you to prove which areas your trademark had actually been “seen” in (for lack of a better term). I don’t even think Web server logs that happen to show IP address visits from different parts of the country would be persuasive evidence in the absence of some proof that you did something more to specifically direct your advertising toward those parts of the country

So, yes, having a federal registration would still be a benefit because it would protect you in all the places in the US where you may not have actually made a sale yet or can’t prove that you purposely directed your advertising activities toward that area.

Mike
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Thank you so much for walking me through that. Now stop giving out free legal advice!!
 
The real practical problem with "common law trademarks" is if you've not gone through the time/expense to register it, even though you may have the moral right to the name, and even the documentation to prove it, THAT corporation who wants it, or uses it in a completely different field has deeper pockets for lawyers than you...


anyway... you may not have seen this outside the uk...

 
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