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Trademarks - Several Answers Needed....

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  • Trademarks - Several Answers Needed....

    Hello. I have set up a Partnership called "Club Apple Pickers". This
    is, of course a cheesy, but fictional name and will suffice for this
    question.

    Assume the following:

    1) The phrase "Apple Pickers" is witty and somewhat unique (but
    composed of two plan vanilla English words).
    2) "Club Apple Pickers" cannot afford a lawyer.
    3) "Club Apple Pickers" plans to register the Domain Name
    www.clubapplepickers.com. The domain name is currently available.
    4) "Club Apple Pickers" will market and sell its brand in the retail
    industry, specifically clothing (caps, t-shirts, etc...).
    5) "Club Apple Pickers" will design, market, and sell a branded
    T-shirt containing a very simple logo with the text "Club Apple
    Pickers".
    6) Unfortunately, there is currently a Registered Trademark for a word
    mark, "Apple Pickers". The mark drawing code is "(3) DESIGN PLUS
    WORDS, LETTERS, AND/OR NUMBERS." The "goods and services" description
    is: "...G & S: Clothing, namely, hats, shirts, pants, socks, jackets,
    and sweaters. FIRST USE: 19980600. FIRST USE IN COMMERCE: 19980600".
    The company that has registered this trademark is a small business in
    a small town.

    I have the following questions:

    1) Because there already exists a registered trademark for the word
    mark, "Apple Pickers" (as described above), am I screwed here? Can I
    still get a registered trademark for the words "Club Apple Pickers"?
    If not, does this hinder my ability to legally sell products bearing
    the name and logo, "Club Apple Pickers"?
    2) Is there any differentiation between the the logo itself and the
    actual combination of words themselves? Will I need to file two
    separate trademarks?
    3) In the scenario that I am UNABLE TO register a trademark for "Club
    Apple Pickers", will I be able to still use the domain name,
    "www.clubapplepickers.com" without fear of reprisal?

    Thank you for your time.

  • #2
    Trademarks - Several Answers Needed....

    >3) In the scenario that I am UNABLE TO register a trademark for "Club
    Apple Pickers", will I be able to still use the domain name,"www.clubapplepickers.com" without fear of reprisal?
    I think I know the answer to that one: No.

    You can register the domain name with the usual registries-- but that doesn't
    take away the trademark owner's rights to actually use the name.

    There have been a number of legal battles involving this issue. The one which
    springs to mind first happened back in 1994 (or thereabouts.) Adam Currie, an
    MTV veejay, registered the name MTV.com and set up a rudimentary web site. (It
    was reasonably advanced by 1994 standards but was quite crude by 2003
    standards.) The interner site was a side project he worked on during the
    downtime in his primary job of being a veejay.

    But then Currie lost his VJ job. He tried to keep the site going under its
    original name, but MTV understandably thought that they owned the rights to the
    MTV.com name (even though Currie himself registered the site, and it was hosted
    by a third party.) Currie and MTV eventually settled out of court, and his
    site continued for a while under the name Metaverse.com.


    *****
    Tim Horrigan <[email protected]>
    *****

    Comment


    • #3
      Trademarks - Several Answers Needed....

      Alvin wrote:
      Hello. I have set up a Partnership called "Club Apple Pickers". This is, of course a cheesy, but fictional name and will suffice for this question.
      Assume the following:
      1) The phrase "Apple Pickers" is witty and somewhat unique (but composed of two plan vanilla English words).
      Currently, according to www.uspto.gov "apple pickers" is not a registered
      trademark.
      There is only 1 entry which has expired.


      2) "Club Apple Pickers" cannot afford a lawyer.
      Don't need one. Just pay the filing fee and fill out the forms as required.
      3) "Club Apple Pickers" plans to register the Domain Name www.clubapplepickers.com. The domain name is currently available.
      You can not trademark a domain name. The protection will come through the
      registration of the name itself.
      4) "Club Apple Pickers" will market and sell its brand in the retail industry, specifically clothing (caps, t-shirts, etc...). 5) "Club Apple Pickers" will design, market, and sell a branded T-shirt containing a very simple logo with the text "Club Apple Pickers". 6) Unfortunately, there is currently a Registered Trademark for a word mark, "Apple Pickers". The mark drawing code is "(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS." The "goods and services" description
      is:: "...G & S: Clothing, namely, hats, shirts, pants, socks, jackets,
      and sweaters. FIRST USE: 19980600. FIRST USE IN COMMERCE: 19980600". The company that has registered this trademark is a small business in a small town.
      What source were you using? The government site shows an expired entry only.
      Even though they use "apple pickers", you are using "club apple pickers"
      Which are two seperate entities. If you do not use the same designs they do,
      there should be no trademark infringement.

      I have the following questions:
      1) Because there already exists a registered trademark for the word mark, "Apple Pickers" (as described above), am I screwed here? Can I still get a registered trademark for the words "Club Apple Pickers"? If not, does this hinder my ability to legally sell products bearing the name and logo, "Club Apple Pickers"?
      Yes. At least in my non-legal opinion anyway. Since you know of the other
      operation, perhaps you should contact them and ask if there would be any
      problems in some friendly competition.
      As a classic example, we have "ford motor cars" and "chrysler motor cars".
      Even though both use "motor cars", and produce similar items, both are
      trademarked names.
      It is the entire name that is trademarked, not parts of.
      Such as "Microsoft Windows". "Windows" can not be an exclusive use of
      Microsoft because it's to generic of a word.

      2) Is there any differentiation between the the logo itself and the actual combination of words themselves? Will I need to file two separate trademarks?
      I believe all are filed at the same time and as a complete entry.
      3) In the scenario that I am UNABLE TO register a trademark for "Club Apple Pickers", will I be able to still use the domain name, "www.clubapplepickers.com" without fear of reprisal?
      Yes. The domain name no longer has trademark protection.
      Nissan.com is not "nissan motors". Because Nissan is a common Japanese name
      and word, it can not be protected from trademark infringement.
      If my name happens to be "James Bond" and I own jamesbond.com, there is
      nothing the movie makers of the famous character can do about it.
      As long as I don't put content on the site about the character without
      permission.

      Thank you for your time.
      You probably should discuss this more with an attorney familiar with
      trademarks.


      Comment


      • #4
        Trademarks - Several Answers Needed....

        Thanks for your reply. However, in your example "MTV.com" was
        obviously an infringment on MTV's registered trademark. However, in my
        fictional example, is "Team Apple Pickers" definitely an infringement
        on "Apple Pickers" (registered TM)?

        [email protected] (Horrigan) wrote in message news:<[email protected]>...
        3) In the scenario that I am UNABLE TO register a trademark for "ClubApple Pickers", will I be able to still use the domain name,"www.clubapplepickers.com" without fear of reprisal? I think I know the answer to that one: No. You can register the domain name with the usual registries-- but that doesn't take away the trademark owner's rights to actually use the name. There have been a number of legal battles involving this issue. The one which springs to mind first happened back in 1994 (or thereabouts.) Adam Currie, an MTV veejay, registered the name MTV.com and set up a rudimentary web site. (It was reasonably advanced by 1994 standards but was quite crude by 2003 standards.) The interner site was a side project he worked on during the downtime in his primary job of being a veejay. But then Currie lost his VJ job. He tried to keep the site going under its original name, but MTV understandably thought that they owned the rights to the MTV.com name (even though Currie himself registered the site, and it was hosted by a third party.) Currie and MTV eventually settled out of court, and his site continued for a while under the name Metaverse.com. ***** Tim Horrigan <[email protected]> *****

        Comment


        • #5
          Trademarks - Several Answers Needed....


          "Richard" <[email protected]> wrote in message
          news:bkd4a5026[email protected]
          Alvin wrote:
          Hello. I have set up a Partnership called "Club Apple Pickers". This is, of course a cheesy, but fictional name and will suffice for this question.
          Richard's usual nonsense snipped>
          1. Without knowing what actual mark the OP is contemplating, as well as for
          what goods or services the OP is planning to use the mark to identify, it is
          impossible to provide any kind of analysis whatsoever.

          2. Getting legal advice from anonymous strangers over the internet is a
          very, very bad idea. Most IP lawyers (myself, included), will generally
          provide a free initial consultation -- to talk to someone who actually knows
          what they're talking about, don't rely on what you might read here.


          Comment


          • #6
            Trademarks - Several Answers Needed....

            [email protected] (Alvin K) wrote in message news:<[email protected] com>...
            Thanks for your reply. However, in your example "MTV.com" was obviously an infringment on MTV's registered trademark. However, in my fictional example, is "Team Apple Pickers" definitely an infringement on "Apple Pickers" (registered TM)?
            I kinda skipped the question of whether "Team Apple Pickers"
            definitely an infringement on "Apple Pickers". My answer to that: it
            might be. It probably would be actually.

            The point of my story about Adam Curry (I misspelled his last name,
            which is especially dumb because he used to be a internet penpal of
            mine!) and MTV was this: Curry registered the MTV.com address himself,
            in his own name. (Moreover: He had his own company running the site.
            He made only minor uses of MTV property while building and maintaining
            the site. The site was hosted on servers which MTV Networks was not
            paying for.) BUT: that did NOT give him the right to use the MTV.com
            name without MTV Networks' permission.

            It was a weird case because while he was an employee he did have MTV's
            tacit permission to put the site up. MTV.com was a little side
            project which his bosses knew about and even encouraged. But the
            permission was just as tacitly taken away when he got sacked.

            The story ended happily enough. The suit was settled out of court.
            MTV eventually set up its own web site, using the rather obvious
            MTV.com domain name. Curry renamed his site to Metaverse.com, and
            since the mid-1990s he has started several internet businesses while
            sometimes also working as a DJ.

            Comment


            • #7
              Trademarks - Several Answers Needed....

              The test for infringement is "confusingly similar". Would an
              unsophisticated, ordinary person mistaken assume that goods or services
              provided by "Team Apple Pickers" were goods or services provided by "Apple
              Pickers". The answer is: probably.

              The problem here is whether "Apple Pickers" can be trademarked as it is, in
              this example, "deceptively descriptive" - another infringement. One example
              of this is "Beer", which cannot be trademarked because it is merely
              descriptive of the product. Probably, "Team Apple Pickers" is more likely to
              be registerable as a trademark with the appropriate disclaimers.

              "Alvin K" <[email protected]> wrote in message
              news:[email protected] om...
              Thanks for your reply. However, in your example "MTV.com" was obviously an infringment on MTV's registered trademark. However, in my fictional example, is "Team Apple Pickers" definitely an infringement on "Apple Pickers" (registered TM)? [email protected] (Horrigan) wrote in message
              news:<[email protected]>...
              3) In the scenario that I am UNABLE TO register a trademark for "ClubApple Pickers", will I be able to still use the domain name,"www.clubapplepickers.com" without fear of reprisal? I think I know the answer to that one: No. You can register the domain name with the usual registries-- but that
              doesn't
              take away the trademark owner's rights to actually use the name. There have been a number of legal battles involving this issue. The one
              which
              springs to mind first happened back in 1994 (or thereabouts.) Adam
              Currie, an
              MTV veejay, registered the name MTV.com and set up a rudimentary web
              site. (It
              was reasonably advanced by 1994 standards but was quite crude by 2003 standards.) The interner site was a side project he worked on during
              the
              downtime in his primary job of being a veejay. But then Currie lost his VJ job. He tried to keep the site going under
              its
              original name, but MTV understandably thought that they owned the rights
              to the
              MTV.com name (even though Currie himself registered the site, and it was
              hosted
              by a third party.) Currie and MTV eventually settled out of court, and
              his
              site continued for a while under the name Metaverse.com. ***** Tim Horrigan <[email protected]> *****

              Comment

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