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[antiques67]

Company X has legal team, sent me certified letter saying "the manner in which XCompany's X(trademark) is promotoed by you is improper, and must be corrected immediately. Consequently, the purpose of this correspondance is to serve notice of X Companies expectations".

The 2nd expectation is:
"More importantly, the trademark may only be used as an adjective, and NEVER as a noun. The phrase X(r) dinnerware is acceptable. The word X alone, used as a noun, is never acceptable."

Can they really dictate that I can't use just their word alone?

The 3rd expectation is: (X being the trademark name)
"The use of Xware, in any form, is a modification of Company's X trademark, and is prohibited. There is no product called Xware"

Can they really prohibit people from using their product name in conjuntion with the generic "wares"... wares being like tableware or dinnerware?

To clarify, I am selling their OLD product (product that was sold at various stores and places dating as far back as the 30s). I am not selling the product that they are manufacturing today, although their current product is named the same as their original product, the product has changed, the materials are different, the design is different etc... but it has always been named the same (although the name went away for 15 years or more as the product was discontinued, but was then relaunched). I am selling the old discontinued product from pre 1970. Why they are coming after me when large companies and websites like ebay, replacements and amazon are all selling their old products (as well as their current products).

Please help me understand the rights with their trademark.

Thanks!

[Zonath]

Their rights with their trademark is to enjoin and recover damages from any use of their mark or any confusingly-similar mark in a manner which has a potential for causing confusion in the marketplace.  If they have a famous enough mark, they have additional rights to enjoin or recover damages stemming from any actions which tend to dilute or tarnish their mark.

So, I think the threshold question would be whether or not your use of the mark could be seen to create the possibility of confusion in the marketplace, and then secondarily, whether or not your use of the mark has the potential to dilute or tarnish a famous trademark.

If either of those questions are answered in the affirmative, you would go on to consider your defenses to infringement, a couple of which have been mentioned in responses to your other posts.

Assuming you don't have any defenses, and you are potentially infringing, then they can place whichever conditions they like on your use of the mark, and then sue if you refuse and continue to use the mark (and they can potentially sue if you've used the mark in an infringing manner in the past, so don't assume if you stop using the mark that it would shield you from any past transgressions).

In general, companies can tend to be pretty particular about what uses of their marks they license.  If you were lucky enough to license the FordŽ logo, for instance, you would probably be handed a three-inch-thick agreement which specified exactly how and where you could use the mark (you may never display the mark in any color other than a very particular color of blue; the ratio between the height and width of the mark must fall within certain parameters; you may never use the mark as a noun; etc...)

As to whether or not they can legally ask for these things and actually sue and win if you refuse and continue to use the mark without permission, then that really just goes back to the initial analysis of confusion and defenses.

For example, your conjunction question could arguably be said to involve your use of a mark which is confusingly similar to their original mark, and thus would be an infringement and make you liable to pay damages stemming from your use of the mark.

[antiques67]

wow - this stuff is tricky.
some things i have just been reading talk about using a mark because it is the only way to describe what you are (in this case) selling.
using your ford example, which is perfect because ford still makes cars. say i wanted to sell only vintage ford cars and i bought the domain vintagefordcars.com

is the domain a violation?
if i sell used fords I have to say the word "ford" to describe what kind of car i'm selling, so i must use the word.
(the mark in my case is not a logo, but a word trademark).

i just don't understand how this can apply so stringently to used/old merchandise.
thanks again, this is fascinating stuff and although my ultimate goal is to comply, i do want to have my own rights. we do have a right to resell merchandise as far as i can tell.

[Zonath]

You're talking about nominative fair use, and one part of the analysis of nominative fair use is whether or not only enough of the trademark is taken to actually identify the product.

In the case of a domain name, I think this is pretty tricky, since I don't think it could reasonably be argued that the use of a domain name which uses a protected mark is actually necessary -- why couldn't antique Ford cars be sold from a domain name like "antiquecars.com" or "bobsvintageautos.com"?  In that sort of situation, one would probably argue that the use of the mark within the domain name is an attempt to capitalize upon the good will enjoyed by the original owners of the mark and to cause some confusion in the marketplace (such as initial interest confusion), rather than simply making fair use of the mark as a way of reasonably identifying the goods being sold at that website. 

To be certain, there have been some decisions regarding nominative fair use for domain names of sites which are critical of certain other brands (like walmartsucks.com), but criticism of a brand has always been accorded more respect in fair use cases than other, more commercial reasons for using another's mark.  I'm not so sure a site selling secondhand goods which were manufactured by the trademark holder would really pass muster.  I suppose one could potentially analogize back to cases where used goods retailers attempted to use the marks of the original manufacturers of their products without permission in their actual trade names, which tended to go against the second-hand stores, if I recall correctly.

You're also asking how this can apply so stringently to used and old merchandise, and the answer is that it of course does not.  You can generally resell any good which bears a trademark, and you would not be guilty of infringing upon that mark.  But the issue isn't about you selling the goods, it's about you advertising the goods, which is an entirely different issue, and definitely could be an infringement of a mark-holder's rights.

[JSonnabend]

First of all, the letter sounds a bit idiotic from the excerpted portion.  The whole "use as an adjective" thing isn't really a legal concept found in the law (except as a shorthand reference to principals of genericness, I suppose).

Second, see the other thread you posted for further information.  I think by and large Zonath and others may be overstating the other side's case.

- Jeff

[antiques67]

Yes, I believe their statements are over reaching and their expectations are only hopeful wishes that I am frightened off and close up shop. I am not finding any language in the letter that has any traction.

It is interesting to note on their insistance that their trademarked name never be bastardized by being added to the word ware, to generalize it as say, wedgewoodware. With the addition of the word ware you are describing all of the wares produced under trademark name. It is common for people to refer to the product as simple X or Xware.

The company did copyright a version of "Xware 2000", but with the edition of the date, which leads me to believe they cannot trademark the generic version of simply "Xware". Although it is my understanding that calling something common language or generic is a very touchy subject.