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Can David win when Goliath misuses the trademark laws? Trademark

Discussion in 'Copyright, Trademark, Patent Law' started by steveorg, Sep 21, 2016.

  1. steveorg

    steveorg Law Topic Starter New Member

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    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.
     
  2. txls

    txls Well-Known Member

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    "I’m here asking questions because my attorney does not feel comfortable with answering litigation related questions"
    What??
     
  3. steveorg

    steveorg Law Topic Starter New Member

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    "What??"
    Thanks for validating my reaction. I'm not familiar enough with these matters to be able to trust that reaction. However, it is what it is.
     
  4. army judge

    army judge Super Moderator

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    The better solution would be to immediately retain new counsel who believes involvement in your legal matters is not inappropriate. Good luck.
     
  5. steveorg

    steveorg Law Topic Starter New Member

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    I'll probably have to go there eventually. But my funds are very limited. That's why the first lawyer was just a consultant for the contract negotiation. It would be very helpful if I could get a response to my question. Thanks.
     
  6. army judge

    army judge Super Moderator

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    Don't rely to much on internet responses, as regards complex, complicated legal matters.

    That's why if you are serious about prosecuting any legal matter, you must retain your own counsel.
     
  7. txls

    txls Well-Known Member

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    Your post is very long and difficult to follow. Everyone on here is a volunteer. Some are retired but many have full-time jobs. I skimmed over your post very quickly and it seems like you're asking for the likelihood of outcomes. It's impossible to guess or predict what someone may or may not do, or what may happen if you get to a courtroom. Many cases that seem to be a cut and dried slam dunk, don't always turn out that way when you get judges and juries involved.
     
  8. steveorg

    steveorg Law Topic Starter New Member

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    Thanks txls and army judge. As much as I'm not happy with the answers, they are the voice of reason. However, due to my financial situation I'm not ready to hire an attorney and I'm not yet sure that I need one. I cannot sign their last offer, but they could very well be trying to intimidate me without having any intention of filing a frivolous lawsuit.

    So for a moment let's just stipulate that any action they would take would be meritless. The parent company is very visible and is one of the largest packaged goods manufacturers in the world. Do you have any opinion on whether a company like that would consider the considerable social media and other Internet pressure that I can apply? Keep in mind that exposing their failure to properly protect their IP would be very embarrassing and if I'm very lucky, for a couple of their trademarks some larger companies might be tempted to file naked licensing actions. Also, I'll be naming names with contact info (not good for their careers) and use the postings for SEO (to help offset my costs), which would be counter-productive to their actual goal of reducing my sales.

    Thanks for all feedback.
     
  9. army judge

    army judge Super Moderator

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    I don't handicap or predict the outcome of legal disputes.
    I've seen sure fire winners crash and burn, and losers reach the moon.
     
  10. steveorg

    steveorg Law Topic Starter New Member

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    One last try. I promise. :)

    I'm like a gnat to them. My volume over a year would cost them much less than the cost of a legal action. Would a large company like that be likely to file a frivolous lawsuit? Please just answer more or less than likely.
     
  11. txls

    txls Well-Known Member

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    Seriously, no idea. It depends on the people in charge. Some people enjoy litigation just for the heck of it or at least they don't mind it. Some large corporations enjoy crushing the little guy who dares go up against them. Some will avoid litigation at all costs.
     
  12. steveorg

    steveorg Law Topic Starter New Member

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    I guess that I lied about it being the last question. Sorry about that. :) This question is a pretty straightforward legal question, assuming that such an animal exists.

    I've never violated the trademarks, so any Agreement that I sign would provide me with no benefit. All of the benefits would be one-sided in favor of the other company. Can a contract be challenged because of the lack of benefit to one of the parties?
     
  13. army judge

    army judge Super Moderator

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    You are free to contest any dispute in a court of law, unless the contract requires mediation or arbitration to settle disputes.

    Back to the contract, you signed it.

    At the time you signed it, unless you mentally deranged on otherwise incompetent, you accepted ALL of the contract's terms.

    You are free to go to court, but I don't see you prevailing.
     

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