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 Chilling Effects Clearinghouse > Domain Names and Trademarks > Notices > Trademark Doping? C&D Issues for Unlicensed use of "Synthobolic" (NoticeID 669324, http://chillingeffects.org/N/669324) Printer-friendly version

Trademark Doping? C&D Issues for Unlicensed use of "Synthobolic"

October 25, 2012

 

Sender Information:
Rich Wyant
Sent by:
Kevin McNeely


Columbiana OH, US

Recipient Information:

SwessPharma




Sent via: email
Re: C & D to [redacted]

It has been brought to our attention that your business,[redacted],
has been using the trademark Synthobolic in association
with the marketing or sale of your products & services. It is possible
that you were unaware of th is conflict, so we believe that it is in our
mutualinterest to bring this matter to your attention.

Synthobolic is a registered trademark (U.S. Reg. No. 4179119) of our
business.

Our federal registration of this trademark provides us with certain
proprietary rights. This includes the right to restrict the use of the
trademark, or a confusingly similar trademark, in association with
confusingly similar products or services.

It is important that we exercise our right to protect our trademark. It
serves as an important and distinctive representation of the origin of
our products as well as the goodwill of our company.

State and federal law supports our position that confusingly similar
trademarks may cause confusion among customers. This confusion may cause
substantial harm to the trademark by facilitating the loss of its'
effectiveness in establishing a distinct association between it, our
products & services, and our company's goodwill.

Due to these concerns, and because unauthorized use of our federally
registered trademark amounts to an infringement of our trademark
rights, we respectively request that you cease & desist in any further use of
Synthobolic in association with the marketing, sale,
distribution, or identification of your pro ducts, or services.

Please respond by letter: indicating your intention to cease & desist
the
use of the trademark Synthobolic or any confusingly similar
trademark, within ten (5) calendar days.

List of pages containing infringing information include:

http://www.swesspharma.com/

http://swesspharma.com/index.php?page=shop.product_details&flypage=flypage.tpl&product_id=8&category_id=1&option=com_virtuemart&Itemid=6&vmcchk=1&Itemid=6

http://www.synthobolic.com/

http://www.synthobolic.com/4.html

http://www.synthobolic.com/3.html

http://www.pumpnpose.org/


As well as unauthorized use in Meta Tags and keywords on each site

We hope that this issue may be resolved this way so we can avoid any
further legal remedies as provided by state law and the U.S. Trademark
Act.

Sincerely,
Rich Wyant
SwessPharma Labs

 
FAQ: Questions and Answers

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Question: What are the limits on dilution?

Answer: The Federal Trademark Dilution Act of 1995 (FTDA, 15 U.S.C. 1125) prohibits the commercial use of a famous mark if such use causes dilution of the distinctive quality of the mark.

A mark may be diluted either by "tarnishment" or "blurring." Tarnishment occurs when someone uses a mark on inferior or unwholesome goods or services. For example a court found that a sexually explicit web site using the domain name "candyland.com" diluted by tarnishment the famous trademark "CANDY LAND" owned by Hasbro, Inc. for its board games.

Blurring occurs when a famous mark or a mark similar to it is used without permission on other goods and services. The unique and distinctive character of the famous mark to identify one source is weakened by the additional use even though it may not cause confusion to the consumer.

The following uses of a famous mark are specifically permitted under the Act:

1) Fair use in comparative advertising to identify the goods or services of the owner of the mark.
2) Noncommercial uses of a mark.
3) All forms of news reporting and news commentary.

In addition, the courts have differed as to what constitutes a "famous" mark under the FTDA. In some cases the courts have said that the famousness requirement limits the Act to a very small number of very widely known marks. Other courts, however, have accepted lesser-known marks as PANAVISION, WAWA and EBONY as being famous and yet others have said that merely being famous in one's product line is sufficient.

Many states also have antidilution laws protecting mark owners.


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Question: How can I find out if someone has a valid trademark?

Answer: It isn't easy. In the United States, a trademark owner isn't required to register the mark anywhere, so there is no single central list of them all. Unlike most other nations, registration here is optional.

Many owners do register their marks with the government, however, to better notify the world of their claims. Each state has its own trademark registry for goods and services sold locally. For companies that sell in more than one state, there is a US federal registry that is accessible online through TESS. TESS is searchable by key word as well as by registration number.

Because registration is not required, however, a word might still be a protected mark even if it doesn't appear in any of these locations.

When a company is selecting a new brand, its trademark attorney will usually conduct a "trademark availability" search which will look in many different locations to try and ferret out competing uses of the desired name. Business directories, Internet search engines, telephone directories are other searched sources. Multi-national vendors will search trademark registries in foreign nations as well.

Even the most exhaustive search will not be conclusive, however, but it will usually indicate that if there is any other commercial use, it is probably limited to a very local area. It is OK to use the same mark as another company, so long as the new use isn't likely to confuse consumers.


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Question: Where can I find federal trademark law?

Answer: To be protected by federal trademark law, the marked goods and services must be used in interstate commerce. Federal trademark law is known as the Lanham Act. It protects marks that are registered with the United States Patent & Trademark Office as well as those that are in use but never registered.

Court opinions and United States Patent & Trademark Office (USPTO) regulations also interpret trademark rights and remedies. See the links to court sites provided by the Legal Information Insitute.


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Question: What is "goodwill"?

Answer: Goodwill is a business or trademark owner's image, relationship with customers and suppliers, good reputation, and expectation of repeat patronage. It is the value a trademark owner builds in a brand.


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Question: Where can I find state trademark law?

Answer: Each state has its own laws governing use of trademarks within its borders. To locate the trademark laws of the 50 states, use the Legal Information Institute links. Both legislation and court opinions create trademark rights and remedies.

If marks are used in interstate commerce, then federal law will also apply.


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