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Posted

Or know a trademark attorney? I don’t have an encyclopedic knowledge of all the surly attorneys and what they do, so I’ll tag a few and see if y’all can help direct me or direct me to someone @TwiceHorn @South Austin @Brisketexan @Ghost of LL @dcbc @Gatorubet. I know Twice is a patent guy, which isn’t the same but seems adjacent. 
 

anyway, we’ve got a big rich company trying to bully my small business over their “trademark” which is the equivalent of a state name and a general commodity, like Nebraska Corn or California Water or Texas Pecans or Maryland Crab Cakes and they’re saying we can’t use those select words next to each other in any way because it’s their trademark. It’s obvious bullshit, but they’re bullies. Every general attorney I’ve talked to laughs at the premise. 
 

So not sure if anyone can point me in the direction of someone who can help. So if I missed an attorney kindly tag them here. I’ve just got a couple simple questions. 

Posted
2 minutes ago, SydneyCarton said:

Or know a trademark attorney? I don’t have an encyclopedic knowledge of all the surly attorneys and what they do, so I’ll tag a few and see if y’all can help direct me or direct me to someone @TwiceHorn @South Austin @Brisketexan @Ghost of LL @dcbc @Gatorubet. I know Twice is a patent guy, which isn’t the same but seems adjacent. 
 

anyway, we’ve got a big rich company trying to bully my small business over their “trademark” which is the equivalent of a state name and a general commodity, like Nebraska Corn or California Water or Texas Pecans or Maryland Crab Cakes and they’re saying we can’t use those select words next to each other in any way because it’s their trademark. It’s obvious bullshit, but they’re bullies. Every general attorney I’ve talked to laughs at the premise. 
 

So not sure if anyone can point me in the direction of someone who can help. So if I missed an attorney kindly tag them here. I’ve just got a couple simple questions. 

I think I came across your competitor recently while searching for your site. 

I didn't like their price options, so F them. 

Posted
1 minute ago, Slacks said:

I think I came across your competitor recently while searching for your site. 

I didn't like their price options, so F them. 

Thanks for trying to dox me bro. 

Posted
Just now, SydneyCarton said:

Or know a trademark attorney? I don’t have an encyclopedic knowledge of all the surly attorneys and what they do, so I’ll tag a few and see if y’all can help direct me or direct me to someone @TwiceHorn @South Austin @Brisketexan @Ghost of LL @dcbc @Gatorubet. I know Twice is a patent guy, which isn’t the same but seems adjacent. 
 

anyway, we’ve got a big rich company trying to bully my small business over their “trademark” which is the equivalent of a state name and a general commodity, like Nebraska Corn or California Water or Texas Pecans or Maryland Crab Cakes and they’re saying we can’t use those select words next to each other in any way because it’s their trademark. It’s obvious bullshit, but they’re bullies. Every general attorney I’ve talked to laughs at the premise. 
 

So not sure if anyone can point me in the direction of someone who can help. So if I missed an attorney kindly tag them here. I’ve just got a couple simple questions. 

Houston, right?  What's your budget?  Do you want a heavy hitter to respond or just someone good?  There may be value in a heavy hitter against a big outfit, in which case Pirkey Barber is probably your no-brainer choice.

You are correct that the type of mark you're describing is called "geographically descriptive," because it describes the place of origin of the goods and services provided, if not the goods and services themselves. These marks are initially unprotectable as trademarks. However, with long-term use and promotion of a geographically descriptive mark, it is capable of being registered.  Do they claim a federal trademark registration?

The biggest problem here is the financial disparity, if any.  Trademark disputes are impossible to resolve judicially without trial, most of the time.  So a bully can keep you spending on litigation way beyond any point that makes any sense.  Of course, it doesn't make a whole lot of sense for them, either.

Posted (edited)
9 minutes ago, TwiceHorn said:

Houston, right?  What's your budget?  Do you want a heavy hitter to respond or just someone good?  There may be value in a heavy hitter against a big outfit, in which case Pirkey Barber is probably your no-brainer choice.

You are correct that the type of mark you're describing is called "geographically descriptive," because it describes the place of origin of the goods and services provided, if not the goods and services themselves. These marks are initially unprotectable as trademarks. However, with long-term use and promotion of a geographically descriptive mark, it is capable of being registered.  Do they claim a federal trademark registration?

The biggest problem here is the financial disparity, if any.  Trademark disputes are impossible to resolve judicially without trial, most of the time.  So a bully can keep you spending on litigation way beyond any point that makes any sense.  Of course, it doesn't make a whole lot of sense for them, either.

Yes, Houston. We haven’t even got to a budget yet, but I mean we don’t have tons of cash lying around. My next question, as to being bully, if you can sue them for basically being Philly and get financial restitution. Sounds like no. And guessing without that no firm will take the case for a back-end win. Sigh. 
 

Edit: and yes they have a federal trademark. 

Edited by SydneyCarton
Posted

I got a guy in Austin whom I send IP/trademark stuff. Not sure how often he’s in Houston federal courts, and I don’t know how territorial those courts are. If you’re interested I can send you his info.

Posted

 

17 minutes ago, SydneyCarton said:

anyway, we’ve got a big rich company trying to bully my small business over their “trademark” which is the equivalent of a state name and a general commodity, like Nebraska Corn or California Water or Texas Pecans or Maryland Crab Cakes and they’re saying we can’t use those select words next to each other in any way because it’s their trademark. It’s obvious bullshit, but they’re bullies. Every general attorney I’ve talked to laughs at the premise.

 

California Raisins GIF

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Posted
1 minute ago, South Austin said:

I got a guy in Austin whom I send IP/trademark stuff. Not sure how often he’s in Houston federal courts, and I don’t know how territorial those courts are. If you’re interested I can send you his info.

I am interested, please, thank you. 

Posted
2 minutes ago, SydneyCarton said:

Yes, Houston. We haven’t even got to a budget yet, but I mean we don’t have tons of cash lying around. My next question, as to being bully, if you can sue them for basically being Philly and get financial restitution. Sounds like no. And guessing without that no firm will take the case for a back-end win. Sigh. 

Yeah, pretty unlikely.  If they have a federal registration, one of the more aggressive tactics would be to petition to cancel their registration.  Or, if they don't have a registration, apply for one yourself and then put the burden on them to initiate proceedings at the trademark office to keep you from getting the registration.

That's one way to relatively inexpensively raise the stakes for them and maybe put the dispute in a forum, the Trademark Trial and Appeal Board, that costs thens or hundreds of thousands, instead of several hundred thousand or more in a federal district court.

So, if the bully is dedicated and committed, they can probably attrition you into changing your name.  One strategery is to get them to pay the costs of your rebranding, which will be a fraction of the cost of litigating.

Posted
1 minute ago, TwiceHorn said:

Yeah, pretty unlikely.  If they have a federal registration, one of the more aggressive tactics would be to petition to cancel their registration.  Or, if they don't have a registration, apply for one yourself and then put the burden on them to initiate proceedings at the trademark office to keep you from getting the registration.

That's one way to relatively inexpensively raise the stakes for them and maybe put the dispute in a forum, the Trademark Trial and Appeal Board, that costs thens or hundreds of thousands, instead of several hundred thousand or more in a federal district court.

So, if the bully is dedicated and committed, they can probably attrition you into changing your name.  One strategery is to get them to pay the costs of your rebranding, which will be a fraction of the cost of litigating.

I’m pretty sure they have in house trademark attorneys, so they probably don’t have the associated costs. 
 

also, you misunderstand, they’re not trying to get us to change our name. Our name is fine. They’re trying to say we can’t use those string of words anywhere on our website to sell services that aren’t their service.

Posted

Ok, I'm getting old enough that I can't think up any good small-firm trademark practitioners in H-town anymore.  They're all in biglaw now.

Unless you have a strong preference for "face time" with your attorneys, Austin would be fine, or Dallas even.

So, for big-time, I recommend Pirkey Barber, specifically probably Rodney Caldwell or Mike Mettauer, or Jeff Becker at Haynes and Boone in Dallas.  For smaller and competent, these guys in Austin, probably specifically Dwayne Goetzel. https://www.intprop.com/  Ultimately, you'll be dealing with someone junior, but their supervisor can make a difference.

 

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Posted (edited)
11 minutes ago, SydneyCarton said:

I’m pretty sure they have in house trademark attorneys, so they probably don’t have the associated costs. 
 

also, you misunderstand, they’re not trying to get us to change our name. Our name is fine. They’re trying to say we can’t use those string of words anywhere on our website to sell services that aren’t their service.

Well, I'd just probably capitulate then.  If it's not your central brand, who cares.

But, in addition to it being difficult to claim rights in geographically and otherwise descriptive marks, like "Texas Electric," people like you also have the right even to use registered trademarks in their descriptive sense.  We can all call "Johnson's Baby Shampoo" that, even if it's trademarked.  It's called "descriptive fair use."

In-house lawyers only reduce the cost of letter-writing.  It also means they're not that serious, yet.  If they're going to big-time bully, or sue, or be sued, they're hiring outside counsel.  So, you may have some chance of getting them to back down with a couple of letters back and forth.

Edited by TwiceHorn
Posted
6 minutes ago, TwiceHorn said:

Well, I'd just probably capitulate then.  If it's not your central brand, who cares.

But, in addition to it being difficult to claim rights in geographically and otherwise descriptive marks, like "Texas Electric," people like you also have the right even to use registered trademarks in their descriptive sense.  We can all call "Johnson's Baby Shampoo" that, even if it's trademarked.  It's called "descriptive fair use."

In-house lawyers only reduce the cost of letter-writing.  It also means they're not that serious, yet.  If they're going to big-time bully, or sue, or be sued, they're hiring outside counsel.

Well, it matters. It basically removed our ability to advertise on the internet entirely. There’s a lot of nuance. 

Posted
2 minutes ago, SydneyCarton said:

Well, it matters. It basically removed our ability to advertise on the internet entirely. There’s a lot of nuance. 

Now it's sounding like the term or phrase is flat generic.  Do they claim a federal registration?  If they do not, they may not be that serious and a good solid response can maybe back them down.

Posted

There is a trademark/patent attorney on here but I am struggling to remember his handle.  He mentioned it a few weeks ago.  I will see if I can find it in one of the Surly college kids threads or travel thread.  Sorry for my crappy memory.

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Posted
2 minutes ago, TwiceHorn said:

Now it's sounding like the term or phrase is flat generic.  Do they claim a federal registration?  If they do not, they may not be that serious and a good solid response can maybe back them down.

They do have a federal trademark.  But it is also a generic term. 

Posted
Just now, Nigel Tufnel said:

There is a trademark/patent attorney on here but I am struggling to remember his handle.  He mentioned it a few weeks ago.  I will see if I can find it in one of the Surly college kids threads or travel thread.  Sorry for my crappy memory.

Probably me.  I talk about it more than most.  Twenty-five years ago, patent attorneys did the lion's share of trademark work.  That's no longer true.  People without the requisite technical background to be patent attorneys have taken over the field, mostly, in big firms.  And quite a few patent lawyers do trademarks exclusively, like everyone except Goetzel mentioned above.  

FWIW, all of the above are at least UT Law grads, most UT undergrads.

Also, I'll add a couple of references.  Jeff McDaniel, who may be mostly retired.  https://profiles.superlawyers.com/texas/austin/lawfirm/law-office-of-jeff-a-mcdaniel/de024bf8-b00b-4eeb-a8df-d5adbf770fdb.html

And a small firm heavy hitter in Dallas, Molly Richard.  https://richardlawgroup.com/professionals/molly-buck-richard/

Amusing story about Molly.  She joined a patent boutique in Dallas when patents were almost entirely a man's game.  I think she was the first woman they had ever hired.  They more seriously than they should have joked about listing her on the letterhead as M. Buck Richard.

  • Like 1
Posted
10 minutes ago, SydneyCarton said:

They do have a federal trademark.  But it is also a generic term. 

Ugh that sucks.  It is probably also "inconstestible" if more than five years old, which makes it harder to take away from them.  But genericness remains one of the grounds to do so even for an incontestible registration.  It's just a bitch to prove.

Posted (edited)
1 hour ago, SydneyCarton said:

Or know a trademark attorney? I don’t have an encyclopedic knowledge of all the surly attorneys and what they do, so I’ll tag a few and see if y’all can help direct me or direct me to someone @TwiceHorn @South Austin @Brisketexan @Ghost of LL @dcbc @Gatorubet. I know Twice is a patent guy, which isn’t the same but seems adjacent. 
 

anyway, we’ve got a big rich company trying to bully my small business over their “trademark” which is the equivalent of a state name and a general commodity, like Nebraska Corn or California Water or Texas Pecans or Maryland Crab Cakes and they’re saying we can’t use those select words next to each other in any way because it’s their trademark. It’s obvious bullshit, but they’re bullies. Every general attorney I’ve talked to laughs at the premise. 
 

So not sure if anyone can point me in the direction of someone who can help. So if I missed an attorney kindly tag them here. I’ve just got a couple simple questions. 

I went to law school with John and spoke to him a few weeks ago.  He's pretty much retired (impressive for someone in his early 50s), but he was one of those rare combinations of patent prosecutor and patent litigator.  He's done plenty of trademark work, and I expect his firm would do a good job.  It looks like he has a presence in Austin, which I didn't know.  Linkedin shows a Houston office as well.

 

https://buchelaw.com/

 

https://www.linkedin.com/company/buche-&-associates-p.c.

 

 

Edited by dcbc
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Posted

Perhaps a silly question, but is the  description that they use the only description by which people can understand your product or services are related to a specific geographical region?

By that I mean, if the bully is preventing you from advertising “New Orleans Sex Toys”, can you advertise “Crescent City Sex Toys”?

There is a common human emotional reaction that opposes change, especially when the change is forced upon you - and you have had years of us  before the threatened change.  I assume that prior use is something that everyone at your shop is comfortable with (and is ubiquitous in your advertising).  

I guess I’m suggesting you step back from ‘battle mode’ and chat with some advertising/marketing gurus to see if there is an alternative marketing strategy that could separate you from them (maybe in a more catchy way) while retaining the reference to your product/services and geographic territory associated with them.

Also, maybe take a look at their products and services and see if there’s anything they do where they have left themselves unprotected, trademark wise, so you can trademark that even if you don’t use it or intend to use it yet - but might  serve as a bargaining chip on the other issue. 

Caveat: I know less about this area of the law than any other lawyer on this board, so anything I say should be given the lack of Creedence it deserves

 

 

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Posted
2 hours ago, SydneyCarton said:

Thanks for trying to dox me bro. 

You said you have a tech company. What additional information did I give, other than you have a website? 

My bad, boss.

Posted
4 hours ago, Gatorubet said:

Perhaps a silly question, but is the  description that they use the only description by which people can understand your product or services are related to a specific geographical region?

By that I mean, if the bully is preventing you from advertising “New Orleans Sex Toys”, can you advertise “Crescent City Sex Toys”?

There is a common human emotional reaction that opposes change, especially when the change is forced upon you - and you have had years of us  before the threatened change.  I assume that prior use is something that everyone at your shop is comfortable with (and is ubiquitous in your advertising).  

I guess I’m suggesting you step back from ‘battle mode’ and chat with some advertising/marketing gurus to see if there is an alternative marketing strategy that could separate you from them (maybe in a more catchy way) while retaining the reference to your product/services and geographic territory associated with them.

Also, maybe take a look at their products and services and see if there’s anything they do where they have left themselves unprotected, trademark wise, so you can trademark that even if you don’t use it or intend to use it yet - but might  serve as a bargaining chip on the other issue. 

Caveat: I know less about this area of the law than any other lawyer on this board, so anything I say should be given the lack of Creedence it deserves

 

 

Sure there are other ways to present it…but we do a lot of business online. Which means search terms in google are a big deal. You work to rank for those terms so you show up, because that’s what people type to find what we offer. We don’t decide what people search for to find services, we can just do our best to make our pages relevant for those search terms. 
 

Their behavior is the equivalent of saying we can’t write content for Best Houston Hamburgers. Your suggestion is akin to saying we try really hard to advertise for Houston Ground Beef Sandwiches. But no one searches for that so we won’t get any customers, if that makes sense. 

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