Legal Help or Advice

[Broughden]

So from all of our practicing attorneys, at least the ones who dont despise me based on the politics forum....I could use some legal advice for a family member.
My mother-in-law is trying to trade mark a name for a soap business.
It contains the word "simple" in the name although the entire name is three words long.
Some company in the UK is trying to block her trademark because their company name is "Simple."

A) She is trademarking three words, not one (ie not just Simple).
B) You are in the fucking UK so who cares?
B and a half) She has been doing business under this name for like a decade or more now. Not sure if this matters.
C) Is there anyway she can fight their block or their request that she be denied?
D) How much money will something like this run? She is a retired teacher and doesnt have a lot.

[Trippy]

Is the UK business also in the soap business? If not what do they do/make?

[Abagadro]

So from all of our practicing attorneys, at least the ones who dont despise me based on the politics forum....

I despise you for reasons completely independent of the politics forum. 

But anyways, the short answer is that there is likely a local attorney who can handle a trademark issue for a relatively minor flat-fee and advise her on issues related to objecting entities (an objection isn't a death-knell for a trademark). Trademark is squishy and gets into weird issues of "likelihood to cause confusion" and other goofy subjective issues that are highly fact-dependent on the market, product, etc. etc.  Trying to navigate trademark by yourself with the help of internet bumpkins isn't a very good idea. If it is something worth trademarking then it is likely worth paying out some cash to do it correctly.

Here is a decent primer but I'd recommend getting an attorney who can actually deal with the issue.

[apocrypha]

Is the UK business also in the soap business? If not what do they do/make?

Yes, Simple is an extremely well known and large brand of skin care products - soap, shampoo, moisturiser etc. I would guess that they will have effectively unlimited legal resources to bring to bear here, which unfortunately probably leaves your mum SOL. The courts and laws are there to protect the rich and the entire legal system reflects that.

[Trippy]

No wonder they took notice. They must have a team dedicated to protecting their IP.

[MahrinSkel]

Not a lawyer.  But I did have an opportunity to discuss trademark law with one who specialized in it.  I was putting together a project to make a game named "Polaris", sci-fi themed and set in solar system in the direction of celestial north.  We researched the trademarks, and the only active trademark for "Polaris" was a snowmobile company.  No chance of confusion, right?  Well, not necessarily.  Polaris licensed their name to make "Polaris SnoCross" in 2000, a snowmobile simulation/sports title.  In the opinion of this trademark attorney, there was a good chance that Polaris could make a claim that our use of the same name for a different videogame infringed on their trademark.

His advice was, if we insisted on using the name, to hope that by the time Polaris the snowmobile manufacturer noticed we would be so much more successful than their title, and have a deep enough warchest, that it wouldn't be worth the trouble for them to fight over it.  Because the general rule on trademark disputes is that whoever is prepared to spend more money, wins.  Usually without actually having to spend it.

Unless your mother-in-law is sitting on a big pile of cash and thinks it's worth blowing it this way, she should find a different name.

--Dave

[schild]

I would've liked to see you make that game.

[Broughden]

Is the UK business also in the soap business? If not what do they do/make?

Yes, Simple is an extremely well known and large brand of skin care products - soap, shampoo, moisturiser etc. I would guess that they will have effectively unlimited legal resources to bring to bear here, which unfortunately probably leaves your mum SOL. The courts and laws are there to protect the rich and the entire legal system reflects that.

A) They use "Simple" she wants to trademark "Simple Soap Works" and has been using it for years.
B) Their market seems to be geographically restricted to the UK from what I can tell. No N.A. sales.

So from what I am hearing the initial flat fee might not be so much but if they (Simple UK) keep fighting then things could get ugly and expensive for her?

[Selby]

So from what I am hearing the initial flat fee might not be so much but if they (Simple UK) keep fighting then things could get ugly and expensive for her?

And they could very well want to.  She gets her foot in the door, the brand takes off, and it goes nationwide... then all of the sudden something they ignored when it was small and not a threat suddenly could pose a very real threat to them.  Don't laugh, it's happened to other brands that were just a very localized business that took off.

A quick google search shows quite a few other US based people making and selling soap with variations of "Simple" in the name, so perhaps if she keeps at it they will not care (or she could just not worry about the trademark).  A lawyer would probably be the best bet for at least seeing how much they are willing to put up with...

[chargerrich]

Is the UK business also in the soap business? If not what do they do/make?

Yes, Simple is an extremely well known and large brand of skin care products - soap, shampoo, moisturiser etc. I would guess that they will have effectively unlimited legal resources to bring to bear here, which unfortunately probably leaves your mum SOL. The courts and laws are there to protect the rich and the entire legal system reflects that.

A) They use "Simple" she wants to trademark "Simple Soap Works" and has been using it for years.
B) Their market seems to be geographically restricted to the UK from what I can tell. No N.A. sales.

So from what I am hearing the initial flat fee might not be so much but if they (Simple UK) keep fighting then things could get ugly and expensive for her?

Also not a lawyer but got embroiled in the late 90s over a company name as well. I was an officer at a smallish company (50-100 people) did VAR work in the IT field since 1990. Another company with a very similar name specialized in heating and cooling systems contacted us to "cease and desist" primarily over our internet site and marketing materials (they wanted the domain name primarily).

In any event, we went through the process, consulted and it was our law teams belief that they had a case since they had been around longer. We ended up settling out of court but I can second the opinons shared here that two things will become the primary criteria for a decision:

1. Industry - since they make soap products as well, expect a fight
2. Money - may not be fair but its the world we live in

[Oban]

The last thing any company wants is for something like this to go public, the best outcome for them is that you just roll over and die.

So, if you are serious about this name, collect all of the information you can about the name, your company's history and the opposing company's history.  Review the information, summarize it, and then send it off to advertising and consumer related blogs.  Local newspapers and TV stations can be fun too.  Then, once there is some publicity, respond to the opposing side THROUGH YOUR LAWYER, and provide links/copies of the publicity.  Odds are, they will leave you alone.

If your company has employees, you can also write a letter to your congressman's constituent affairs office and bring up the potential loss of jobs due to this international trade mark dispute.

[Abagadro]

I disagree with that.  Protecting TM is one thing that big companies will have no compunction with being agressive about even in the face of bad publicity because if they don't they risk dillution via a thousand cuts and then their TM isn't enforceable.

[Oban]

I posted advice for Broughden.

[Miguel]

I'm no lawyer, but I did take a class in IP issues last quarter, and rather than to give anything specific I'll tell you what I wrote in my notes regarding trademarks.  Hopefully the real lawyers can correct anything that I misunderstood (keep in mind this is all filtered through my engineer's eye's/ears).

Like I said, I'm no lawyer, but hopefully this is food for thought!

In trademark enforcement, there are two main issues:
1) is the trademark enforceable.  Enforceability is shown through two mechanisms:
      a) a company must prove use of the trademark in prior sale of goods
      b) that the trademark is sufficiently distinctive

In order to prove infringement of their mark, the company must further show that
      a) there is a likely of confusion between the owned mark and the competing mark, and
      b) that use of the mark by the competitor has diluted the strength of the owners mark by limiting the mark in its exclusive association with a single source

So if the UK company can show enforceability by 1) proving that they were selling goods in conjunction with their mark prior to your mom, and 2) showing that they have applied for and have been granted a trademark, then they can prove their mark is enforceable.

For showing likelihood of confusion (part b above), there are several factors:
  a) strength of the mark - is the mark descriptive, arbitrary, etc.  Ken's Soap Company is descriptive and is less 'strong' than something like Apple Computers, because there is no common association between the apples (the fruit) and computers.
  b) proximity of goods - e.g. how similar are the product lines.  In this case, both are soaps, however it would be up to lawyers to argue the possible different intended use of the soaps
  c) similarity of marks - from AMF Incorporated v. Nescher, this is usually classified as 'sight, sound, and meaning'.  How similar are the spellings, pronunciation, etc.
  d) evidence of actual confusion - if the UK company can show actual confusion this would certainly lend itself to a strong argument for future confusion
  e) marketing channels - are the same advertisement channels utilized by both companies?
  f) type of goods and purchaser care - are the products delineated to different markets?
  g) intent of infringer - is there proof that the naming was intentional to cause confusion?
  h) likelihood of expansion - how probable is confusion in the future given the growth of the individual companies?

If any or all of these factors apply to show confusion between the marks, then the case against your Mom is stronger.

I hope this helps.

[schild]

I can imagine there's a way around this as you're in Hellhole, America and they're in the UK/EU. I'm not even sure Simple is a known brand in America.

[Miguel]

I can imagine there's a way around this as you're in Hellhole, America and they're in the UK/EU. I'm not even sure Simple is a known brand in America.

True, however I'm sure there must be at least some sort of respect for trademarks between the EU and America.  We aren't talking about China or Russia here, where copyright and trademark infringement is a significant part of their GDP. 

[Tale]

A) She is trademarking three words, not one (ie not just Simple).

One of the other words (soap) is the other Simple's primary product. And the third word could be taken to mean "is good" so effectively all three are in play.

B) You are in the fucking UK so who cares?

1. They're not just in the UK. They're an international brand. I live in Australia and they're big here: http://www.simpleskincare.com.au/pure-soap.html
2. They might want to do what every American company ever has done to every other country, and expand to the US.

B and a half) She has been doing business under this name for like a decade or more now. Not sure if this matters.

We often get (fictional example) Joe McDonald the fourth generation Tasmanian pie maker who has been prevented from selling any more McDonalds Apple Pies. I think the Simple soap brand has been around in Australia since I was a kid and I'm now 39.

[Bunk]

Thought I'd necro this to ask for some legal advise for myself. Before anyone says it, yes I know asking people on the internet for free legal advice isn't the best course of action, but I'm really just looking for an opinion on what to do next. Also, I am in Canada, but I feel the lawyer types here should still be able to offer some useful general advice. So here is the gist of it:

I bought a condo two years ago. Near the end of the process, I was informed that there was a settlement expected on a lawsuit over some defficiencies in the construction. The previous owner offered to split the proceeds of the lawsuit with me 50/50. An addendum was made to the Subjects, and I signed some stuff.

A year later, I find out that we are still in litigation over this, and we need to spend $70 grand out of the strata contingency fund to continue. We do.
Six months later, they require additional funds to continue, and this time I end up paying an assessment of $1100.00.

Finally, they settle the case. They advise us that there were two parts of the settlement - one for the building envelope which was being paid out now, and one for the clubhouse, that will be paid later in the year. A cheque is sent to me in my name, for $7700.

I get a letter from the previous owner telling me she knows the settlement was paid, wants her half of the money.

I go through my paperwork, all I find is the removal of Subjects, which states: "The Seller and Buyer agree to split 50/50 the Club house rebate for not being built at the time of completion". I send her an email advising her of the wording, and advising her that the clubhouse settlement had not been paid yet.

She responds to me angrily that I had signed an agreement to split it all. I reply back that I would look for the paperwork, she eventually sends me a copy of the other paper I signed. It states: "The Assignor assigns a 50% share of any future settlement compensation related to property xxx. The Assignee agrees to the Assignor retaining right to the remaining 50% share of any future settlement compensation related to property xxx".

At this point I responded, advising that I had signed this, however it didn't cover any details on the handling of further legal costs. I suggested that I would send her 50% minus my assesment and a small amount calculated on the money removed from the contingency fund. This amounted to an offer of about $1900.00

She responded rather angrily that she disagreed, and that she was now considering asking for half of a rebate cheque I had recieved last year... This rebate cheque was money that was distributed to all of the strata owners based on extra funds remaining on the building envelope repairs that were performed. She and I had never discussed this in any way before.

I respond back that I didn't want to get in to a large fight over this, I would drop the contingency fund issue, and offered to send her a cheque for 50% of the settlement, less the assessment I paid, which would have been  $2750.

She responds back that she had researched it all, and I owed her: The settlement ($7700) + the rebate cheque ($2400) - the assessment ($1100) x 50% = $4500.

I replied that the rebate cheque was not in any way part of our agreement. I restated that my previous offer had been $2750, and that if removed the rebate from her equation, her calculation had it at $3300.00 - basically I wanted her to pay the rebate, her calculations split the rebate. I offered to negotiate based on these numbers.

She has responded with: "I no longer wish to speak with you about this, I suggest you consult a lawyer, I will be initiating legal procedings."


So, if you managed to read all of that... What do I do next? My dilemna, is that I could not afford to give her the $4500 she is asking for now, even if I wanted to. I could barely manage to afford up to $3300, as that is about what I set aside of the settlement - the rest went to pay off debts.

I'm guessing she is going to have a lawyer write up a nasty letter to send to me. Should I be talking to a lawyer now (which I really can't afford) or should I just wait and see what she sends me?

[Oban]

Wait and see what she sends you.

[CmdrSlack]

Call the lawyer who did the purchase for you. See if he'll give a free consult. If not, wait and see what you're sent.

[Bunk]

Yea, unfortunately I did it through a Notary rather than a lawyer.

[Sky]

Ye gods, you bought a place with an active lawsuit for deficient construction without a lawyer?

 

Sorry man, I really don't want to be a dick about it, but that's fucking nuts. Get a lawyer and good luck with the previous owner. Sue her for the legal fees.

[Oban]

The amusing thing about all this is that you are in Canada, so the likelihood of a lawyer taking on such a case is slim to none.

Hurray for 90% of cases settling prior to trial.

[Bunk]

Ye gods, you bought a place with an active lawsuit for deficient construction without a lawyer?

 

Sorry man, I really don't want to be a dick about it, but that's fucking nuts. Get a lawyer and good luck with the previous owner. Sue her for the legal fees.

No offense taken.

I didn't complete complete the purchase until the bank had a signed form from the structual engineer that all of the repairs were completed properly, and that the repairs were under warranty. The lawsuit was strictly regarding compensation to the owners for what had been paid to do the repairs, and for the developer not building the required Clubhouse.

It would be almost impossible to buy a condo built in the last 20 years in BC that didnt have some type of leaky condo lwasuit pending.

As far as getting a lawyer goes, the biggest issue is that I simply can't afford it. If I did and didn't win fully, I'd likely end up selling the condo or going bankrupt. My financial situation is unfortunately not nearly as good as it was when I bought the place.

[Miguel]

As far as getting a lawyer goes, the biggest issue is that I simply can't afford it.

I think you would be surprised about this:  I was under the impression that speaking with a lawyer would cost half a grand per hour, in reality it's far less than that.  You stand to lose over a thousand dollars in the difference, and would probably be well worth the cost investment of a few hours.  A good lawyer will be able to tell you the real fiscal meanings of 'related to property XXX' and what you are and aren't obligated to pay.

Also, keep in mind that this person on the other side will be undergoing the same reasoning you are right now:  it makes little sense to spent thousands of dollars to get less back in return. Litigation is often all about who has the staying power and resources on one side or the other.

Plus, you need to be extremely careful about how the settlement is worded should you make any payment:  you want to be double sure that nothing gets pulled out a year later and used to sue you again for other reasons.  Lawyers are artists when it comes to drafting settlement agreements with terms you would have never thought of to cover as many of the basis as possible.  Last thing you want is to send her a check then get threatened over and over for other amounts she finds out about (which don't even have to be relevant to your agreement).

Well worth the cost IMHO, even if things are tight.

[Lantyssa]

You should be able to get a consult cheaply or for free.  The lawyer will need to know the details before they can decide if they even want to pursue it.  At that point they should have some idea of how things will progress and can give you cost estimates (and maybe even a course of action to stop this early) based on those scenarios.

Unless they suggest something active for you to do, then they won't be involved in anything else until the woman takes action.  And if you've talked with a lawyer, then the next time she sends you a threatening letter you can tell her, "My lawyer has informed me that you have no standing on X, Y, and Z and that further you are responsible for A and B."

One of the best things a greed fuck can hope for is that the person they're dealing with refuses to go to a laywer in the hopes of saving money.  Because the cost of that consult will be far less than even what you end up paying trying to settle with her on the side.

Get a laywer.

[Abagadro]

Her attitude may adjust when the lawyer asks for a $1,000 retainer to argue over a thousand dollars.  Most lawyers would probably advise her to take it to small claims court if you have that equivalent up North.

[Bunk]

Her attitude may adjust when the lawyer asks for a $1,000 retainer to argue over a thousand dollars.  Most lawyers would probably advise her to take it to small claims court if you have that equivalent up North.

We do, and that is what I am hoping happens. At this point I think I'll just wait and see what she sends me.