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(Message started by: wholesaler on Aug 12th, 2007, 12:38pm)

Title: trademark and patent for an existing product
Post by wholesaler on Aug 12th, 2007, 12:38pm
Hi,

I posted this in the trade mark section as well but it is also concerning a patent rights.
I'm a wholesaler and have been selling for several months a specific toy with a specific name.
Recently, I was contacted by a company that bought the trade mark for that name related to that toy that I sell.
They said that now they own the trade mark for it and I can't sell it.
I was selling this product long before they even register the mark, can they prevent me from continue selling it now?
They also claim that they have patent pending rights for this product, but their filing date is long after I was selling it. How can they claim rights for something that was already in the market?
It looks like they saw a good selling product in the market and decided to register some rights for it and then go after the people that were already selling it.
What are my rights regarding this issue?

Thanks,
David

Title: Re: trademark and patent for an existing product
Post by Bill Richards on Aug 12th, 2007, 1:57pm
You are correct in that this is mostly a TM issue.


on 08/12/07 at 12:38:08, wholesaler wrote:
They said that now they own the trade mark for it and I can't sell it.

Selling the product and selling the product under the same TM can be two different issues.


Quote:
They also claim that they have patent pending rights for this product, but their filing date is long after I was selling it. How can they claim rights for something that was already in the market?

It depends upon the product and what's claimed.  In general, unless they invented the product and unless it's within one year of the first sale or offer to sell, they shouldn't be able to get the product patented.  These are hard questions to answer in the abstract.

Title: Re: trademark and patent for an existing product
Post by wholesaler on Aug 12th, 2007, 3:03pm
I'm selling the product under the same name that I have been selling it for the past 8 months.
This name is the name that the manufacturer gave it about a year ago.
This company OBVIOUSLY saw that this product is a good seller and decided to register the trade mark (that was already in use) only about 2 months ago. (the filing date is in June)
Can they do something like this and then go after all the sellers that already sell it for a while?

Thanks,

Title: Re: trademark and patent for an existing product
Post by still_studying on Aug 12th, 2007, 9:57pm

on 08/12/07 at 15:03:02, wholesaler wrote:
I'm selling the product under the same name that I have been selling it for the past 8 months.
This name is the name that the manufacturer gave it about a year ago.
This company OBVIOUSLY saw that this product is a good seller and decided to register the trade mark (that was already in use) only about 2 months ago. (the filing date is in June)
Can they do something like this and then go after all the sellers that already sell it for a while?

No, you have prior use, and hence preexisting rights.  There are people and companies that have tried this, and they keep getting shot down.  Unfortunately, it doesn't stop others from trying to play the same game.  It just wastes everyones' time and money.

Title: Re: trademark and patent for an existing product
Post by PA on Aug 13th, 2007, 9:23am

on 08/12/07 at 21:57:27, still_studying wrote:
No, you have prior use, and hence preexisting rights.  There are people and companies that have tried this, and they keep getting shot down.  Unfortunately, it doesn't stop others from trying to play the same game.  It just wastes everyones' time and money.

How do you know for sure the OP's rights are senior to those of the registrant's?

Title: Re: trademark and patent for an existing product
Post by boozerker on Sep 17th, 2007, 5:29pm

on 08/13/07 at 09:23:45, PA wrote:
How do you know for sure the OP's rights are senior to those of the registrant's?

No one knows for sure, but we're only answering based in the scenario described, not on whether their story is factual or not.

Disclaimer -- Take my advice lightly, it could be slightly inaccurate as I'm going by memory on books read.

Wholesaler -- the way I understand trademark: anywhere you have sold your product, you have automatic trademark rights to it without having to officially register anything. The other company (if they indeed trademarked the name legally), can only sell in areas where you haven't yet.

Each state approaches the issue a bit differently. Some might give you statewide protection and deny that company from selling there without infringing on your IP, other states might restrict your product's "trademark zone" to whatever city's limits you've sold it in.

Trademark's purpose is to avoid customer confusion of one seller's product with another's. So if that company has taken your product's name, you would legally still be able to continue selling wherever you already have, and be able to challenge their IP infringement in those areas, but you won't be able to sell elsewhere new if they registered nationally.

When you officially trademark a name, it gives you power to collect damages for infringement. Otherwise, you can probably only force that company to discontinue sales in your area. Also, study the difference between state and federal trademarks, as which you choose determines just how widespread your protection is.

Have luck in that.  



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