4 ms·

What does "aggressively" mean? And who judges if you've been "aggressively" defending your trademark? In this case it's pretty obvious that the best thing Nort

What does "aggressively" mean? And who judges if you've been "aggressively" defending your trademark? In this case it's pretty obvious that the best thing North Face could have done was to completely ignore South Butt, because their actions have only led to South Butt selling more of their stuff. It's a perfect example of the Streisand effect. Shouldn't that amount to something if they later have to defend their North Face trademark?

potatolicious 17y ago
"And who judges if you've been "aggressively" defending your trademark?" Presumably, the judge. "It's a perfect example of the Streisand effect." A very, very temporary Streisand effect, yes. If North Face is at all confident about winning this suit, then South Butt will have to shut down - you're granting them a brief bit of revenue (which you can later sue them for too!) in exchange for their permanent death. "Shouldn't that amount to something if they later have to defend their North Face trademark?" Trademarks don't work that way. "We inadvertently publicized this infringing trademark while we were suing them" is not grounds for losing your own trademark.
Goladus 17y ago
You should probably ask a lawyer, but as I understand as a layman if it can be demonstrated that you knew about an infringing trademark but ignored it, it is a lot harder to win a lawsuit. I think the basic idea is that trademark rights are valid for as long as you need them, however you lose those rights if you abandon the mark. I think that ignoring infringement is a piece of evidence that the mark is not useful for you anymore. It may not be absolutely critical, but certainly doesn't help. Suppose some other company markets the brand "The Fourth Ace" using the South Butt logo, and they get successful and start stealing business. The North Face sues them, but have trouble in the case because North Place points out that their logo is a variation on South Butt, which doesn't seem to bother them.
- btilly 17y ago
  The correct solution in this situation is to contact South Butt, and offer them a license for a nominal amount. Now presto "The Fourth Ace" issue stops being an issue because you raised the issue with South Butt and made them get a valid license.
lallysingh 17y ago
And can you just give them a free license?

potatolicious 17y ago

"And who judges if you've been "aggressively" defending your trademark?" Presumably, the judge. "It's a perfect example of the Streisand effect." A very, very temporary Streisand effect, yes. If North Face is at all confident about winning this suit, then South Butt will have to shut down - you're granting them a brief bit of revenue (which you can later sue them for too!) in exchange for their permanent death. "Shouldn't that amount to something if they later have to defend their North Face trademark?" Trademarks don't work that way. "We inadvertently publicized this infringing trademark while we were suing them" is not grounds for losing your own trademark.

Goladus 17y ago

You should probably ask a lawyer, but as I understand as a layman if it can be demonstrated that you knew about an infringing trademark but ignored it, it is a lot harder to win a lawsuit. I think the basic idea is that trademark rights are valid for as long as you need them, however you lose those rights if you abandon the mark. I think that ignoring infringement is a piece of evidence that the mark is not useful for you anymore. It may not be absolutely critical, but certainly doesn't help. Suppose some other company markets the brand "The Fourth Ace" using the South Butt logo, and they get successful and start stealing business. The North Face sues them, but have trouble in the case because North Place points out that their logo is a variation on South Butt, which doesn't seem to bother them.

btilly 17y ago
The correct solution in this situation is to contact South Butt, and offer them a license for a nominal amount. Now presto "The Fourth Ace" issue stops being an issue because you raised the issue with South Butt and made them get a valid license.

lallysingh 17y ago

And can you just give them a free license?