Trademarks n Lawyers

AJ Drew

AJ Drew

Have trademarks and lawyers become a tool to attack the competition without cause?  According to the guy who started Elixirs of Pain, the people who own the trademark on the company name NW Elixirs sent a cease and diciest order.  Evidently, nobody is allowed to use the word elixir but them.

So I thought,  should trademark the term AJ Sauce and then tell everyone they can not use the word sauce.

 
 
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If you look at the comments (Posts To Page on the left) left by people on their FB page, it's full of people saying they never got their shipment from the kickstarter. Or the money back. Even "scam artist" was used. There is not one person saying they got it.
 
Look on the KS page. Same comments. ONE person (I saw) said they got a broken shipment. Maybe it was the mock-ups.
 
Like I am saying you have no idea what went down here. It's speculation. Was there really ever a letter? You don't know!
 
I understand you want to talk TMs but there's no facts here to discuss. We don't know what happened. Perhaps you are defending a "fly by night" scheme. But we don't know!
 
Sure, in general it is a good discussion. But there is nothing in this example to discuss. 
 
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Hot Pepper - Just speaking to the letter as quoted, the idea that someone can own a word like elixir or sauce.  For the purpose of that conversation, I do not think it really matters who is a good guy.  I think established business like to use trickery to attack start ups.  Thought that was a conversation that could be had without going all sideways.  Again, i was wrong.
 
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LOL. I saw a FB post where he stated he got the letter. I read that post. That tells me nothing.
 
I don't get my facts from vague FB posts.
 
He is out of business now. Non-issue.
 
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I did some research some years back on this very subject and spoke with a patent/trademark attorney in Chicago.
Basically you can use words, packages, names that are identical to another products as long as they do not cause product confusion. Example I can market rifle scopes under a company name xerox.  There is absolutely no confusion in product being marketed so Xerox cant claim I am benefiting from their name and harming there market share. On the other hand if I started manufacturing copiers under xerox, there would be hell to pay and basically no contest in a legal suit.
 
However, there is also another way other then copyrighting a name to gain total legal use of it. Providing no one else is using it, And diligence is required to confirm this. You use the name/trademark as though it belongs to you and flood the market with your name brand. By doing so you establish rights, by use and consumer recognition. now days with the internet its not too difficult to Google a name and see whose product has gained recognition. I should also mention this legal advice is circa 1989 and could have been revised since.
 
Example below, no confusion and both companies live in harmony probably not even knowing of the existence of the other.
 
 
http://www.luckydoghotsauce.com/
http://www.luckydoghotdog.com/
 
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Yo, LDHS, is NW Elixers going to the CA Expo? 
 
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salsalady said:
Yo, LDHS, is NW Elixers going to the CA Expo? 
Click to expand...
I hope so!


Back on track, here's the thing about fact vs fiction with trademarking. And I'm no lawyer, I'm just relaying what I learned having gone through the process:

you folks mocking the process suggesting faux generic trademarks are uninformed. Suggesting you TM "green" or "Pepper" or whatever - It simply does not work like that.

To obtain a mark and register it is a process.

You must first apply for the mark.

There is an approval process - and then for a period thereafter (3 mo's, 6 mo's, I forget which) others can contest the mark. If contested, an authority reviews the case and either dismisses the complaint granting the trademark, or validates it, dismissing the trademark.

But here's the thing - to apply, you must demonstrate the mark in use, with commerce across state lines - at least one example.

Now that said, if I didn't register Lucky Dog Hot Sauce and I was using it in California, and had sold my sauce to people in 8 states, if someone else tried to register Lucky Dog Hot Sauce, I could then contest their claim, provided they are in one of the states I sold to.

There's also classification for marks - having classes and subclasses of products, the same term or phrase can be used by multiple companies, provided there is no possible infringement resulting from multiple people using the mark.

Again, using Lucky Dog as an example - how many Lucky Dogs do you think there are? I'll tell ya - dozens. Dog treats, dog training, pet toys, doh waking, hot dog stands (including a famous chain in NOLA) etc, etc.

My trademark is "Lucky Dog Hot Sauce". It is in the subclass of food, subclass condiments, subclass pepper sauces.

There will be more Lucky Dog trademarks in the future, but there can only be one Lucky Dog Hot Sauce. Food's Best Friend was a bit less specific, but what other space are you going to try to use that phrase in besides food?

Common terms like the names of colors or places cannot be trademarked, nor can names from what I understand. But let's say someone called their hot sauce "Lucky Dog's Hot Sauce" with a little cartoon dog they name Lucky...if it's a hot sauce, that'll be clear infringement. If it's something to pour on dog food, it still might arguably cause sufficient consumer confusion over the brand name and bottle size, but chances are I wouldn't bother.

In a nutshell that's how TMs work, as is understand it. It's not like websites used to be where you could "Doman squat" - register 6000 domain names hoping to be able to sell to the highest bidder. No, to trademark something you must submit documentation that demonstrates your mark to be "in use" and have it approved.

Just throwing that out there.
CAPCOM said:
 
Example below, no confusion and both companies live in harmony probably not even knowing of the existence of the other.
 
 
http://www.luckydoghotsauce.com/
http://www.luckydoghotdog.com/
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Spot on - exactly what i was saying. LD hot dogs have been around longer and are better known. They didn't contest my trademark, likely because a hot dog is not a bottle of hot sauce. My trademark is in the same parent class of "food" but they're in a different subclass. I'mma condiment, they're a prepared food.

Harmonious as 2 bugs in a rug.
 
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Lucky Dog Hot Sauce said:
Suggesting you TM "green" or "Pepper" or whatever - It simply does not work like that.
 
...[a bunch of stuff that is correct]...

Common terms like the names of colors or places cannot be trademarked,
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I'm not saying you are wrong, I just love a good counter example.
 
The color PINK is a registered trademark of Owens Corning -- http://www.owenscorning.com/
That quote is from their site, and I believe it's on all of their packaging.
 
I realize that it's not as ridiculous as it sounds. It only refers to insulation that is that particular shade of pink. But it helps explain why people get confused. It certainly does sound ridiculous though.
 
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Transient Exuberance said:
I'm not saying you are wrong, I just love a good counter example.
 
The color PINK is a registered trademark of Owens Corning -- http://www.owenscorning.com/
That quote is from their site, and I believe it's on all of their packaging.
 
I realize that it's not as ridiculous as it sounds. It only refers to insulation that is that particular shade of pink. But it helps explain why people get confused. It certainly does sound ridiculous though.
Click to expand...
 I believe the phrase GET-PINK is what is trademarked. not the color.
 
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Transient Exuberance said:
GET-PINK is their phone number, and maybe trademarked too, but "The color PINK is a registered trademark of Owens Corning" is cut and pasted from their site.
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If in fact the color pink is trademarked, it is only that shade of pink. Not pink in general. And it would apply only to products that Owens corning mfrs. If I wanted to use that shade of pink and make hotdog buns they couldn't do anything about it.
 
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CAPCOM said:
If in fact the color pink is trademarked, it is only that shade of pink. Not pink in general. And it would apply only to products that Owens corning mfrs. If I wanted to use that shade of pink and make hotdog buns they couldn't do anything about it.
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Absolutely. It's not nearly as ridiculous as it sounds. Just don't use any pink insulation in that hot dog.
 
Transient Exuberance said:
I realize that it's not as ridiculous as it sounds. It only refers to insulation that is that particular shade of pink. But it helps explain why people get confused. It certainly does sound ridiculous though.
Click to expand...
 
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ajdrew said:
Have trademarks and lawyers become a tool to attack the competition without cause?  According to the guy who started Elixirs of Pain, the people who own the trademark on the company name NW Elixirs sent a cease and diciest order.  Evidently, nobody is allowed to use the word elixir but them.

So I thought,  should trademark the term AJ Sauce and then tell everyone they can not use the word sauce.

 
Click to expand...
 
 
I wanted to chime in on this since:
 
A) I live in Portland, OR and know Andrew personally (owner of NW Elixirs)
 
B) I actually procured 2 trademarks for my brand: 
    - Use of Hotmaple, or Hot Maple with or without a logo  https://trademarks.justia.com/862/38/hotmaple-86238435.html
    - Use of the Phrase "Get Saucy":  https://trademarks.justia.com/862/86/get-86286830.html
 
 
First of you can't Trademark common nouns like "Sauce" -- but you can trademark grammatical constructs like "Awesome Sauce Brand".  The USPTO actually has pretty set rules on that.

For NW Elixirs, I believe it was more than just the word "Elixir" -- it was that plus the whole package that was similar. Bottle type, colors on the label... even marketing and presentation.
 
Part A: Looking closer  (the case of NW Elixirs vs Elixirs of Pain):
Even if you set aside the commonality of the name -- the packaging, color scheme of the label, and bottle type chosen were already similar.  Add the name to this and you have what I consider to be an "at a glance" failure... where the similar names and form factors can cause consumer confusion (even if label shapes differ).  Elixir of Pain could easily be misconstrued as a sub-brand, or related to NW Elixirs in some fashion... and that is enough for to pursue protection.

If there was a sauce in a Woozy bottle with a bright orange Devil called "Bob's Elixir" -- they wouldn't have a case & Andrew probably wouldn't care.  But in the case of Elixirs of pain --- it is very similar to an uninformed shopper (talking average joe - off the street)

Also, Andrew is a great guy. He actually supports the community as a whole. When I was a new sauce - he went OUT OF HIS WAY to actually recommend my product into stores... before he even knew me as a person. He prides himself on being a Chef as well as a Craft foods advocate -- so it really takes a lot for him to make the decision to pursue any kind of action.  Based on what I see in similarities - I don't blame him.

 
Part B:  Trademark trolls!!! Why the hell do I own GET SAUCY -- am I being an Asshole?
So, if you come up with something in marketing that people are not yet using... you should protect that. I wanted my "Just Do It!" slogan as well as my protected brand.  I searched online and did a lot of social-mining research on catch phrases, and I discovered that in early 2013 no one outside of alcohol consumers were saying "Get Saucy".  So before I went to market with it on twitter and Facebook etc... I Trademarked it for sauces.  Cost me a whole $500.

Then I started using it.  Now, what do you think happened when I started publicly using it??  About a Dozen other sauce companies started using it...  it seems my idea was indeed a good one.  However, I had legal proof of it not being in use before my trademark, and analytical proof of the copycats bandwagoning after. A few unscrupulous sauce makers even put #GetSaucy on their labels and one tried launching a sauce called Get Saucy.

Regardless of intent, I started the brand and slogan for a specific reason -- and my wish was to keep it as such.  It isn't like I saw a popular catch-phtase and then TM'd it AFTER the fact.  It was an intentional and planned activity to protect future marketing.
 
To me that is a legitimate use of Trademark enforcement --- Intellectual Property protection.  Just like Andrew is protecting his brand.

Also - trademarks are EASILY researched online, so there is no excuse for "Oops I had no idea" anymore.  Google provides a huge database. If you are a potential new company, it is on you to first determine if a TM exists for a name / phrase / slogan.  If you fail to do a simple search... and someone owns the rights, you are just setting yourself up for a bad day.
 
 
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Hotmaple, seriously?

One label is round, other label is square
One font is square box, other is rounded.
One label is absolutely full of words, other is empty.

http://nwelixirs.com/shop/nw-elixirs-hott-sauce-1
https://www.facebook.com/ElixirsOfPain/photos/pb.247687975345148.-2207520000.1428214630./247955565318389/?type=1&theater

Yep, bottles look alike.  Other than, uh no.

Then there is what the lawyer letter reportedly said: “the term ‘Elixirs’ in association with hot sauces constitutes trademark infringement, unfair competition, dilution, and other causes of action under state and federal law.”

Seems rather clear that if the story is accurate it is in fact the word elixir they do not think any other hot sauce maker may use.  Thing is, it doesnt really matter if this one particular instance is or is not true as the discussion I had hoped to have is on how people use lawyers to intimidate their competition unfairly. 

If the quote is accurate, I dislike NW Elixir folk for what i feel is rather abusive considering the volume of other hot sauces out there with the word elixir in the title.  Hell, if the first letter they sent was from a lawyer I dislike them.  Folk should contact each other and attempt resolve before sending threatening letters.

Nothing against them, I am just a bigot against the whole lawyer race.  Well, other than Saul and his brother.  Now those some good folk.  The rest of the lawyers out there, oh hell bla bla bottom of the ocean good start yada yada.
 
Doc Holidays Feel Good Elixir - Same bottle, same black and white label, word elixir


 
 
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Hotmaple said:
 
 
I wanted to chime in on this since:
 
A) I live in Portland, OR and know Andrew personally (owner of NW Elixirs)
 
B) I actually procured 2 trademarks for my brand: 
    - Use of Hotmaple, or Hot Maple with or without a logo  https://trademarks.justia.com/862/38/hotmaple-86238435.html
    - Use of the Phrase "Get Saucy":  https://trademarks.justia.com/862/86/get-86286830.html
 
 
First of you can't Trademark common nouns like "Sauce" -- but you can trademark grammatical constructs like "Awesome Sauce Brand".  The USPTO actually has pretty set rules on that.

For NW Elixirs, I believe it was more than just the word "Elixir" -- it was that plus the whole package that was similar. Bottle type, colors on the label... even marketing and presentation.
 
Part A: Looking closer  (the case of NW Elixirs vs Elixirs of Pain):
Even if you set aside the commonality of the name -- the packaging, color scheme of the label, and bottle type chosen were already similar.  Add the name to this and you have what I consider to be an "at a glance" failure... where the similar names and form factors can cause consumer confusion (even if label shapes differ).  Elixir of Pain could easily be misconstrued as a sub-brand, or related to NW Elixirs in some fashion... and that is enough for to pursue protection.

If there was a sauce in a Woozy bottle with a bright orange Devil called "Bob's Elixir" -- they wouldn't have a case & Andrew probably wouldn't care.  But in the case of Elixirs of pain --- it is very similar to an uninformed shopper (talking average joe - off the street)

Also, Andrew is a great guy. He actually supports the community as a whole. When I was a new sauce - he went OUT OF HIS WAY to actually recommend my product into stores... before he even knew me as a person. He prides himself on being a Chef as well as a Craft foods advocate -- so it really takes a lot for him to make the decision to pursue any kind of action.  Based on what I see in similarities - I don't blame him.

 
Part B:  Trademark trolls!!! Why the hell do I own GET SAUCY -- am I being an Asshole?
So, if you come up with something in marketing that people are not yet using... you should protect that. I wanted my "Just Do It!" slogan as well as my protected brand.  I searched online and did a lot of social-mining research on catch phrases, and I discovered that in early 2013 no one outside of alcohol consumers were saying "Get Saucy".  So before I went to market with it on twitter and Facebook etc... I Trademarked it for sauces.  Cost me a whole $500.

Then I started using it.  Now, what do you think happened when I started publicly using it??  About a Dozen other sauce companies started using it...  it seems my idea was indeed a good one.  However, I had legal proof of it not being in use before my trademark, and analytical proof of the copycats bandwagoning after. A few unscrupulous sauce makers even put #GetSaucy on their labels and one tried launching a sauce called Get Saucy.

Regardless of intent, I started the brand and slogan for a specific reason -- and my wish was to keep it as such.  It isn't like I saw a popular catch-phtase and then TM'd it AFTER the fact.  It was an intentional and planned activity to protect future marketing.
 
To me that is a legitimate use of Trademark enforcement --- Intellectual Property protection.  Just like Andrew is protecting his brand.

Also - trademarks are EASILY researched online, so there is no excuse for "Oops I had no idea" anymore.  Google provides a huge database. If you are a potential new company, it is on you to first determine if a TM exists for a name / phrase / slogan.  If you fail to do a simple search... and someone owns the rights, you are just setting yourself up for a bad day.
 
Click to expand...
 
FWIW, this is *EXACTLY* the route I would take personally.
 
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