steveorg
New Member
In this case, Goliath is a large division of a Fortune 100 company. They have been laughably lax in proper use or enforcement of many, if not most of their registered trademarks. When they should use BrandX®, they just use BrandX. This is true of their website, product listings, advertising and packaging. Their lack of use clearly runs afoul of US Code TITLE III - NOTICE OF REGISTRATION § 29 (15 U.S.C. § 1111).
In this saga, my company is David. We manufacture a generic product that can be used to replace BrandX. The use is in the spirit of "As compared to BrandX" as is commonly found in stores and on line. Our company is not the only competition, and all competitors have used "BrandX" instead of "BrandX®".
It is also worth mentioning, that our product is not actually a replacement of BrandX but a refill of BrandX's container, which is easily refillable but was not meant to be refilled. Because of that, we have always bent over backwards to say our product is not BrandX and explain how it is different to avoid any confusion. Otherwise, we'd have an enormous number of pissed off customers, returns and horrible ratings. Hence, even with infringement, there are no damages.
During this odyssey:
• Goliath's attorney's misrepresented their rights to Goliath®. They claimed rights to the word mark even though they only have protection for the logo design mark. Before I realized this I had already made many changes on graphics and listings that had to be reversed. Not only did they cause me to commit fraud, they reached an Agreement with a competitor that does not know of the error, so he is committing trademark fraud on several platforms.
• Goliath also misrepresented their rights to BrandX®. They tried to make me believe that my prior use was infringing.
• Before contacting me about the trademark issues, Goliath engaged in subterfuge to illegally gain access to a trade secret. The attempt was inartful and obvious, so did not succeed. This was right before I was notified about the trademark issues, so I believed that they had a different motive at the time.
Goliath first contacted us after we've been in business for over three years. One of our competitors has been in business six years. When Goliath contacted us, we agreed to immediately change all collateral that we control, which includes our website, packaging, marketplace listings, social media collateral and advertising, but not SEO focused postings that we are not in a position to track down or retract. They have agreed to these changes, but want to codify them in an Agreement with ridiculous provisions that seemed aimed at hobbling, if not destroying my company. If I survive the provisions, I'd never be able to sell the company because of the Agreement.
My attorney agrees that I'm better off without an Agreement because I have never infringed on Goliath's trademark rights, I am not currently infringing and even if there was infringement, Goliath could never prove damages. Unfortunately, I can't assume that they will just go away if we do not reach an Agreement.
I'm here asking questions because my attorney does not feel comfortable with answering litigation related questions. It seems obvious that if we end-up in court I'm doomed because I cannot afford the legal expenses. Even so, I'd like to be certain of the landscape and my options, and to determine if guerilla tactics are a reasonable strategy. So here are my questions:
1. Assuming that my explanation is accurate and Goliath does not have a case, do you think that they are likely to bring a legal action?
2. My uneducated take is that any legal action would be frivolous. If it is obvious that the action is frivolous, would a motion to throw out the case be likely to succeed? If yes, would attorney fees be recoverable?
3. Would any pre-emptive strike such as a request for an injunction be worthwhile? There would definitely be legal costs, but perhaps they can be minimized. If nothing else I would have a local federal court for jurisdiction.
4. I would let them know beforehand that if they take action I plan on playing this out in the court of public opinion. In doing so I'd make Goliath look like bastards; and the law firm, lawyers, anyone cc'd on the correspondence, people in Goliath's legal department and the employee that tried to steal the trade secrets seem incompetent and unethical. There is a list of specifics that I can use that are accurate and well documented. I would also let them know that I will keep the issue alive for years to help recoup my costs through SEO.
5. My attorney has acted as a consultant (to control costs), so I am free to email whoever I want. Accordingly, I plan on identifying relevant legal department employees of Goliath and email them as well as all the law firm employees. I'll also email the PR department since they may also be interested in stopping the action to avoid the negative publicity. Is that reasonable?
All feedback and suggestions are appreciated.
In this saga, my company is David. We manufacture a generic product that can be used to replace BrandX. The use is in the spirit of "As compared to BrandX" as is commonly found in stores and on line. Our company is not the only competition, and all competitors have used "BrandX" instead of "BrandX®".
It is also worth mentioning, that our product is not actually a replacement of BrandX but a refill of BrandX's container, which is easily refillable but was not meant to be refilled. Because of that, we have always bent over backwards to say our product is not BrandX and explain how it is different to avoid any confusion. Otherwise, we'd have an enormous number of pissed off customers, returns and horrible ratings. Hence, even with infringement, there are no damages.
During this odyssey:
• Goliath's attorney's misrepresented their rights to Goliath®. They claimed rights to the word mark even though they only have protection for the logo design mark. Before I realized this I had already made many changes on graphics and listings that had to be reversed. Not only did they cause me to commit fraud, they reached an Agreement with a competitor that does not know of the error, so he is committing trademark fraud on several platforms.
• Goliath also misrepresented their rights to BrandX®. They tried to make me believe that my prior use was infringing.
• Before contacting me about the trademark issues, Goliath engaged in subterfuge to illegally gain access to a trade secret. The attempt was inartful and obvious, so did not succeed. This was right before I was notified about the trademark issues, so I believed that they had a different motive at the time.
Goliath first contacted us after we've been in business for over three years. One of our competitors has been in business six years. When Goliath contacted us, we agreed to immediately change all collateral that we control, which includes our website, packaging, marketplace listings, social media collateral and advertising, but not SEO focused postings that we are not in a position to track down or retract. They have agreed to these changes, but want to codify them in an Agreement with ridiculous provisions that seemed aimed at hobbling, if not destroying my company. If I survive the provisions, I'd never be able to sell the company because of the Agreement.
My attorney agrees that I'm better off without an Agreement because I have never infringed on Goliath's trademark rights, I am not currently infringing and even if there was infringement, Goliath could never prove damages. Unfortunately, I can't assume that they will just go away if we do not reach an Agreement.
I'm here asking questions because my attorney does not feel comfortable with answering litigation related questions. It seems obvious that if we end-up in court I'm doomed because I cannot afford the legal expenses. Even so, I'd like to be certain of the landscape and my options, and to determine if guerilla tactics are a reasonable strategy. So here are my questions:
1. Assuming that my explanation is accurate and Goliath does not have a case, do you think that they are likely to bring a legal action?
2. My uneducated take is that any legal action would be frivolous. If it is obvious that the action is frivolous, would a motion to throw out the case be likely to succeed? If yes, would attorney fees be recoverable?
3. Would any pre-emptive strike such as a request for an injunction be worthwhile? There would definitely be legal costs, but perhaps they can be minimized. If nothing else I would have a local federal court for jurisdiction.
4. I would let them know beforehand that if they take action I plan on playing this out in the court of public opinion. In doing so I'd make Goliath look like bastards; and the law firm, lawyers, anyone cc'd on the correspondence, people in Goliath's legal department and the employee that tried to steal the trade secrets seem incompetent and unethical. There is a list of specifics that I can use that are accurate and well documented. I would also let them know that I will keep the issue alive for years to help recoup my costs through SEO.
5. My attorney has acted as a consultant (to control costs), so I am free to email whoever I want. Accordingly, I plan on identifying relevant legal department employees of Goliath and email them as well as all the law firm employees. I'll also email the PR department since they may also be interested in stopping the action to avoid the negative publicity. Is that reasonable?
All feedback and suggestions are appreciated.