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[M. Arthur Auslander]

Dear Mr. Flanagan,

I you are selling a trademarked product, it is my belief that you can use the trademark name to sell the product.

Selling a comparable procuct with the well known name may even be a crime.

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
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[tabberone]

Actually, don't be 100% sure about the color issue.

DeWalt has won in court on the secondary meaning of yellow and black on power tools.  They are shutting down people left and right who are selling yellow and black power tools.

Selling one pill of the trademark brand and a bottle of yours is just asking for trouble.

eBay rules say you can compare once in your item description to a name brand.

Don't use it in your title.  

Your idea of using a table comparing the ingredients is probably not bad and it will bring up the trademark name in description searches.

[M. Arthur Auslander]

Dear Kevin,

If you spent more time on the legitimate part of doing business, the trademark could easily follow. If you are trying to cop someone elses trademark for your benefit you are on the edge of trouble and not looking out for your best interest.

The way you are working you won't even earn enough money to pay a lawyer's fee.


M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
ELAINE's Workshop®
E arly L egal A dvice I s N ot E xpensive™
Reality Check®

[JimIvey]

Hi Kevin,

I'll chime in with a few notes since I haven't seen them addressed yet.

First of all, I do patent law so the best I can do is give hints and guesses in the other areas: TM and (C).

You mentioned all 3: patents, trademarks, and copyrights.

Briefly (and grossly over simplified), copyrights prevent direct copying, trademarks prevent consumer confusion resulting from similar branding/packaging/slogans, and patents protect inventions.  

If you infringe their patent and it's valid and enforceable, you're out of luck until the patent expires or you sign a license.  To find out whether you infringe or whether it's enforceable is very involved and, accordingly, expensive.  They should at least identify their patent, however.

If you violate their copyrights, it's probably in your labeling.  You can simply change your labeling to get around that.  If you quote their labeling for comparison, use quotation marks and give attribution.  You shouldn't need permission to critique their language -- an exception known as "fair use."

With respect to trademarks, I suspect your use of "Hydroxycut" is too prominent -- or they're incorrect in their assertions.  There's a case I mentioned in this forum a while back in which a generic perfume claimed to smell like "Chanel No.5" (or some other number).  They won on the notion that they were using the "Chanel No. 5" trademark to refer to the Chanel No. 5 product, not their own.  This was a while back, and I don't know if there have been any new developments in this area.  But you seem to be okay (within the law) in comparing your product to Hydroxycut by name.  Trademarks aren't supposed to make products impervious to comparison and critique.

I hope that helps.

Regards.

[tabberone]

Good information Mr. Ivey, however you are hampered by the fact that you don't understand the rules on eBayville.

It is a kingdom unto itself.

The DMCA is being abused by VeRO - verified rights owner. The is the program that eBay started to comply with the DMCA.

All they need to do is tell eBay that an item is infringing on their trademark or copyright and eBay shuts it down.

If it is a copyright issue than eBay will allow you to file a counter notice.  Most VeRO members when faced with a counter notice back down since they know their claim is not enforceable in court.  They are counting on the bully factor.  Personally I would have loved to be a fly on the wall when Disney got my lawsuit. They were probably trying to figure out what hit them.

If the rights holder claims it is a trademark issue than eBay says the auctions were shut down under provisions of the Lanham Act and you can't file a counter notice.  Of course eBay does not require the rights holder to get an injunction.

Additionally there is software that scans eBay for key words and auctions are shut down based on that.  From auctions I've had shut down I can't believe that a real person didn't look at the auction first to see what was being shut down.

[JimIvey]

Thanks for the clarification.  I'm already out on a limb somewhat stepping away from patent law.  And, while I shop on ebay, I have no specific familiarity with their attempts to comply with the DCMA.

Thanks again,

Jim

[M. Arthur Auslander]

Dear Mr. Flanagan,

If you resell a car you can refer to its trademark. If you build the car and call it by an already used trademark, that is trademark infringement. If what you do is unclear, if it is not trademark infringement it may be unfair competition.

If there is doubt you may win in court if you can afford the legal fees.

If you play it straight it may be the best way and the least expensive.

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
ELAINE's Workshop®
E arly L egal A dvice I s N ot E xpensive™
Reality Check®

[M. Arthur Auslander]

Dear Mike,

From what you say, it looks like you are in trouble or looking for trouble. It could cost a fortune to fight.

Try and start clean.

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
ELAINE's Workshop®
E arly L egal A dvice I s N ot E xpensive™
Reality Check®

[M. Arthur Auslander]

Dear Mike,

From all the posting, I don't get a clear picture of the problem. If you have something good going it might be worth getting the advice of an intellectual property lawyer that you can trust rather than have to speculate as to what can be done by hypothesis.

My gut feeling is that there is a simple solution.

There are limit on what you can do once the goods are out of your hands but they cannot misuse your trademark.

They they can resell what you sell them without your trademark if they do not trade on your trademark.

It may be false economy not to pay for legal advice since you have a good thing going. Just make sure that you are dealing with an experience intellectual property lawyer you can trust.

[M. Arthur Auslander]

Dear Mike,

You really have to know what you are doing.
Trademarks - there are questions of decsriptiveness, liklihood of confusion and trade dress and with pills there may be problems with the Food and Drug Administration.