Posted by M. Arthur Auslander on December 15, 1998 at 05:17:01:
In Reply to: L.L. BEAN vs BEANROCK posted by Duane Beans Sousa on December 14, 1998 at 19:46:06:
: My nick name is Beans....i got the name handed down to me by my Dad...who's nick name was Beans. He got it from My Grandfather, who's nick name was Beans since 1875. It's a family hand me down.
: I came up with this idea at Camp a few Summers ago...after someone told me that it takes a longer time to boil water at high elevation....BUT if you put a rock in the pan the water will boil quicker....I experimented and found that It worked. I packaged the rock with 2 cups of beans, and a small packet of spices for a chile recipe. I called It "BEANROCK" with Camp Chile. I then sent my $250.00 to the trademark department to trademark then name. I got an official trademark return shortly after that.
: A year later the Trademark Department wrote me saying that L.L. BEAN, the outdoor apparel mail-order company thinks my product will be damaging to their company, and that they have been using the name BEAN since 1912.
: I have to dispute the matter by Feb 1st 1999, or my trademark will dissolve. Dang, is this for real? It's a family name, handed down, and I can't use it because it's too similar to L.L. BEAN. Heck, they don’t even sell any food products. And every time i mention L.L.BEAN here on the West Coast to someone, they say to me “L.L. BEAN? " Who's That??. And they claim to be world renown? I sell these things at farmers markets. How can I be damaging a company that claims to have a profit of $10,000,000 a year. i can't afford a lawyer, but If anyone has an Idea how I can keep my trademark....please speak up or write me.
: Duane Beans Sousa
It is a matter of public record, L.L.Bean has two trademark registrations for BEAN issued in 1929. They are very strong marks. L.L.Bean sells a very large variety of products. Their trademarks are incontestable under the present law. The law is substantially fair. If you have a mark use it you are entitled to register it and it can also because incontestable.
Once there are registration they can but made incontestible. There is now even an antidilution statute which gives rights of enforcement beyond the scope of a trademark registration. Your name or family name cannot be taken away from you but that does not mean that because it is yours that it can be used in conflict with another registered mark.
From what you say it is not even L.L.Bean that is objecting to your trademark application it is the Patent and Trademark Office examining attorney in an office action that must be responded to.
There is litigation with regard to the name Beam for whiskey. It is a family name and there are different members of the family in the business. Serious restrictions apply to other users.
I have sympathy for your plight and believe that you have a good argument that your mark is nonetheless different. The reality though is that once an examining attorney takes a position, the attorney is usually sustained even on appeal. Appeal is expensive. What is more were the Patent and Trademark Office to approve your application the mark would be published for opposition.
While I no longer now represent L.L.Bean and have registered very many of their trademarks including L.L.Bean, were I now their counsel I would recommend opposing your application based on the law as it now exists notwithstanding my personal sympathy for your plight if it was approved by the Patent and Trademark Office examining attorney and published.
An opposition is expensive. My guess is that you could even possibly prevail on the ground of no likelihood of confusion. There are arguments. I would encourage you to give up, if for the only reason of the expense.
When a client comes to me the first thing I suggest is a "Reality Check". It goes beyond the law. Even if I had never represented L.L.Bean I would have advised you to find another mark.
M. Arthur Auslander (aus@auslander.com)
Auslander & Thomas, 505 Eighth Avenue, New York, NY 10018
212-594-6900, fax 212-244-0028
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