Trademark Infringement - What Say You?

[Red Baron]

Red Baron Car Wash is my registered trademark. The company below uses the same name. Is that a trademark infringement, and if so, am I negligent by blowing it off rather than enforcing my trademark?

http://www.huntersales.com/shop-s/index.php?productID=134

 

[washnvac]

That Red Baron name has the "tm" behind it. That means it is registered at the patent office.( or should be ) Do you actually have that name registered?

 

[Red Baron]

That Red Baron name has the "tm" behind it. That means it is registered at the patent office.( or should be ) Do you actually have that name registered?

Evidently he has red Baron registered, but I have red Baron Car Wash registered and that is the name he is using.

I don't mind, but I've been told (by Red Baron Pizza's acquisitions attorney in no uncertain terms) that trademark holders have to enforce the trademark or it's invalid.

 

[washnvac]

OK, that is why the "tm" is right behind the Red Baron. I would say you probably have a case. Maybe call them up, tell them you are a nice guy, so you will settle for a measly 20% of the gross for using your name.

 

[gsgriffin]

Evidently he has red Baron registered, but I have red Baron Car Wash registered and that is the name he is using.

I don't mind, but I've been told (by Red Baron Pizza's acquisitions attorney in no uncertain terms) that trademark holders have to enforce the trademark or it's invalid.

I have also heard that if you do not shoose to enforce it when you are aware of an infringement it greaty weakens your trademark and may make it unenforceable in the future.

GSG

 

[rph9168]

Need to start with a Cease and Desist Order. If they don't comply then you can pursue them or work out an agreement to use the name. My guess is that there is not much to be had in this case. They will probably just stop using the name.

 

[I.B. Washincars]

I don't see an issue myself. We have a PLACE named "Red Baron Car Wash" and a PRODUCT to wash cars named "Red Baron". If my neighbor, Joe Channel decides to start making locks, does he need to worry about the "ChannelLock" pliers people getting up his a$$?

 

[pitzerwm]

IMO Trademarks are mainly not so much the words, but the "design/logo"

When I trademarked autocareforum, I trademarked the word with no design. It will cause more enforcement issues, but on the Internet, I'm covered.

Before you waste time and energy, go read what you have actually trademarked. One trademark that I have is a name and logo design, but when a competitor tried to use the "name" reversed somewhat, a letter from the lawyer, cease and desist was all it took, but namely because its a small town and they didn't want to waste the money fighting it.

Years ago, Bud took a florist to court over their use of "this bud is for you" The judge threw it out and stated "that if someone couldn't tell the difference, didn't deserve another "bud".

 

[Red Baron]

I dunno, I have a 6-pack of canned worms open already, I really don't need another one.

When I suggested a partnership with Red Baron Peetza's (don't even want to spell their name right, lest I get her attention...again) acquisitions attorney to follow Proctor & Gamble's entry in to the car wash industry, she very sternly told me that RBP was a registered trademark that they would defend vigorously and I better not even copy their color. I asked her: "Huh? You trademarked the color red?"

 

[Earl Weiss]

Lots of questions.

First, I think a name is a service mark not a trademark. Trademarks involve color and style etc.

Second, are you sure you were the first to use and trade / service mark the name?

Third , is your trade and service mark state or federal. If State, are you in the same state.

Did you have a proper search company do the trade and service mark searches before you got your protection?

 

[Red Baron]

Lots of questions.

First, I think a name is a service mark not a trademark. Trademarks involve color and style etc.

Second, are you sure you were the first to use and trade / service mark the name?

Third , is your trade and service mark state or federal. If State, are you in the same state.

Did you have a proper search company do the trade and service mark searches before you got your protection?

I've done several trademarks/servicemark on the US Patent & Trademark website, and only twice did they go through the first time. Usually it's a wasted $355. On Red Baron Car Wash I hired a patent attorney out of California to do it - he charged $310 in addition to the fees. Yes he did a search. In fact you can do a search from the website.

The first use is hard to establish. The first use date registered by my attorney was the date my car wash opened, but not my date of first use. On this site you can see all the times I attempted to register the name myself, but it was rejected:
http://tess2.uspto.gov/bin/showfiel...h&a_search=Submit+Query&a_search=Submit+Query

 

[Earl Weiss]

If you have a federaly protected mark than a cease and desist letter would be in order. I tend to take the position in these letters that they have made an innocent mistake and simply want them to stop and destroy any materiasl in violation of the mark. You can certainly take a stronger approach but that makes it harder to reach a reasoneable solution if they claim prior use or attack your protection another way.

 

[briteauto]

Check this out - it is a similar situation.

http://www.uspto.gov/web/offices/com/sol/foia/ttab/2dissues/2000/27236.pdf

 

[Sequoia]

The threshold for infringement is whether the other entitys use is "confusingly similar."

I would deduce that car wash products, using your name, are confusingly similar to your use of the same name for your car wash.

A certified letter to the other party, demanding they abandon the name, is in order. Once they abandon the name, you have strenghthened your trademark tremendously. Be sure to document all of it to obtain that strengthened trademark.

 

[ProCarWashes]

Trademark

The way I understand it is that you apply for a trademark. The USPT office will do a preliminary search and either refuse or grant a trademark on its search. If they grant a preliminary OK for use, then and only then may you place a TM after the name or logo. Once the approval is granted, which may take over a year from first application, Then you place a R behind the name or logo, then it's registered. There are many things that can be registered. It takes a while for it to go through. Doing the process yourself doesn't guarantee you own all rights to a name or logo. It depends on how good your application was in the beginning. I hired an attorney to do a search for me and she gave me a letter of recommendation before we proceeded with my trademark. She told me that most application done by people with no experience in trademark processes, have very limited protection.

 

[phred113]

The brand of Red Baron chemical is not in conflict with your trademarked car wash brand. I say this having never seen your trademark.

I have several trade names, trademarks, and similar IP (patents) registrations. I have been served by Monster Cable for using Monster in a brand - apparently all things Monster are their domain....not. You can trademark (your term) a name, a look of the name, and both. They may have trademarked "Red Baron", RED BARON, or similar thing. Yours may be Red Baron Car Wash (TM)

It would not worry about this since it will be difficult to prove intent, harm and assess damages. Can you quantify the harm done to you and/or the goodwill he has 'stolen' by allegedly using your name?

It is fun to think about, however. Good Luck.