does a company loose rights or effectiveness in trademark enforcement
if it allows blatant use of the trademark on the web. For example if
there are thousands of people publicly selling NFL brand products and
NFL doesn't take action, can they later sue one firm for doing that
even though there are 5,000 plus others offering the same thing?

Hello jax~

A trademark may be lost if the word, phrase, image, etc. becomes
?generic? through wide-spread misuse.

?Escalator,? ?cellophane,? and ?nylon? were all once trademarked, but
the terms became so generic, the trademarks were lost. (?The Invention
of Velcro,? by Mary Bellis, About.com:
http://inventors.about.com/library/weekly/aa091297.htm ) As Robert
Mionske  reports: ?Sometimes a mark becomes so associated with the
product or service that the mark losses its protection. Examples of
companies being too successful include Aspirin, Kleenex, and
Escalator. These were all originally distinctive marks that lost their
trademark protection by becoming generic.? (?Legally speaking with Bob
Mionske - Protecting your brand,? VeloNews:
http://www.velonews.com/news/fea/5469.0.html )

An example from real life: If people start calling every brand of
facial tissue ?Kleenex,? then Kleenex looses it?s trademark. The word
?Kleenex? is no longer the name of a brand, it?s a generic name for a
wide variety of brands.

In order to receive the trademark in the first place, the word,
phrase, image, etc. *must* be unique. If everybody starts calling
*all* copy machines ?Xeroxes,? the trademark is no longer unique and
Xerox looses its trademark.

The difficulty in all this is that most often, it?s not the company
that misuses the trademark, but others. This is why advertisements in
magazines targeting writers and journalists urge the use of generic
terms (?correction fluid? instead of ?White Out,? for example), or ask
that writers include Registered Trademark symbols, if they must use
trademarked terms.

However, there is *no* problem with people selling trademarked items.
Someone can sell official NFL items?and advertise as such?without
hurting a trademark. They would only be using the trademark illegally
if they sold *non-NFL* items as real NFL items.

Or, if someone started calling all football helmets ?NFLs,? and the
phrase caught on, NFL could loose it?s trademark, unless they
successfully battled against it.

You might find ?A Guide To Proper Trademark Use,? Chan Law Group,
helpful: http://www.chanlaw.com/tmproperuse.htm

As well as ?How Are Marks Protected,? All About Trademarks:
http://www.ggmark.com/protect.html


If you need any clarification, please don't hesitate to ask before you
rate my Answer.

Regards,
Kriswrite


KEYWORDS USED:
Trademark
://www.google.com/search?q=trademarks&hl=en&lr=&ie=UTF-8&start=20&sa=N

"were once trademarked"
://www.google.com/search?hl=en&lr=&ie=ISO-8859-1&q=%22were+once+trademarked%22

---

Request for Answer Clarification by jax3-ga on 09 Apr 2004 07:40 PDT

Thanks Kriswrite. Good start, and the comment by ipfan was very
useful. Here's what I'm having a problem deciding: At what level does
a knockoff merchant have a defense against a trademark owner? My
brother had an online store selling "real" items he bought at
closeouts etc. Then he went to some open trading markets and found
hundreds of knockoff items for sale at prices way under what he was
paying for the real thing. He looked on the web under knockoffs and
found hundreds of thousands of sites advertising knockoff and replica
items as knockoffs-  not masquerading as the real thing.

He built a Monster Commerce site and they and Yahoo stores, search
engines, aggregators and others easily accepted his advertising for
replica items ie terms like "knockoff NFL jerseys for sale" He saw
this something like "hey I buy things as knockoffs and I sell them as
knockoffs. All of the mechanisms support  this. No one has bothered
him but he is afraid of the possibility that he is being illegal and
could be arrested for doing this since one of his suppliers was busted
at a flea market. I told him I think he has some protection since he
is honestly advertising as knockoffs and there are so many out there.

It would seem to me that the sheer volume of the knockoff business and
its "acceptance" would offer him some protection, but perhaps that
would be wishful thinking.

Comments?

jax

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Clarification of Answer by kriswrite-ga on 09 Apr 2004 08:09 PDT

Jax, honestly, if he's really concerned, he should consult an attorney
who works with trademarks. That said, I would say he should take the
term "NFL" off of everything. He can get creative about how he
describes things (i.e. "modeled after you-know-who's familiar hats,"
for example). The down side to this is that when folks search for NFL
items, his stuff won't show up. Possibly, he could sell a few genuine
NFL items and eliminate this down side.

This may be somewhat cautious, but it's my advice, nonetheless.

I hope this helps,
Kriswrite

I appreciate the clarity and caution to contact an attorney, however I
don't feel I got the answer re to what level of inactivity against
widespread proliferation of possible infringements means that the
trademark holder has waived or lessenned its rights especially when
certain steps (informing search engines and store hosters (like
Monster Commerce etc) to desist promoting stores that are purportedly
infringing.  Thanks any way.

You might also find this previous comment thread helpful:
http://answers.google.com/answers/threadview?id=303343

Please allow me to expand on kriswrite's excellent answer by observing
that it is a relatively rare occurrence for a registered trademark to
be found to be generic through lack of enforcement. To answer your
question specifically, the NFL can certainly sue whomever they wish
for trademark infringement (assuming the defendant was indeed using
one or more of the NFL's registered or common law marks without a
license).  The defendant could assert as a defense that the NFL has
indeed lost the ability to enforce its marks by allowing thousands of
other infringements to proceed without enforcement.  This may or may
not work: if the NFL is doing all that it reasonably can to enforce
its marks but the sheer volume of infringements makes it impossible to
go after every infringer, the court would likely take cognizance of
that and excuse the fact that there are some un-addressed
infringements floating around.  This problem is even more prevalent
with the web, since infringements can occur immediately and all over
the world.  I mean, how, practically, is the NFL supposed to stop a
guy in Nepal from selling counterfeit NFL merchandise on his web site
hosted in Pakistan?  Can?t be done.

Note that the foregoing is subtly different than saying the mark has
become ?generic," because that means that the public has come to think
of the source of the good and the good itself as the same thing. 
E.g., if everyone said "Kiwi" when they meant shoe polish, AND the
Kiwi company did nothing to counteract this descent into genericism,
then ?Kiwi? might be found to have become a generic mark for shoe
polish.  The NFL?s perceived ?lack? of enforcement may be due to
resource constraints, not a willful or negligent abandonment of the
mark.  Normally, those last two things are what you need to find
abandonment and, as a result, genericism.

Hi ipfan

A tip will follow the further answer to this
I don't feel I got the answer re to what level of inactivity against
widespread proliferation of possible infringements means that the
trademark holder has waived or lessenned its rights especially when
not taking certain basic steps (informing search engines and store
hosters (like Monster Commerce etc) to desist promoting stores that
are purportedly infringing. When there are hundreds of major services
(overtutre, yahoo etc) essentially promoting replica and knockoff
products, and search engines suggesting the best terms to use as
synonyms and whole sites including ebay pushing it, how can a naive
merchant be expected to be on notice that the words "replica NFL
Jersey" - a true statement by the way -for an article(s) purchased at
a major flea market could get him in criminal trouble? I also have a
question after this one. Can I direct the question to you?
Jax3

Hi jax~

Unfortunately, once a question is rated, no tip can be added. Also,
Researchers do not get notifications of comments, only clarifications.

I'm very sorry you were disappointed with your Answer. Unfortunately,
the original question was quite different from the clarification you
requested. While I am qualified to answer the first question, I am not
an attorney, and therefore not qualified to answer your clarification.

Regards,
Kriswrite

Hi jax3:

This will respond to your April 12 8:32 PDT post.

Your question is timely:  see
http://news.com.com/2100-1038_3-5190324.html.  Given this approach by
Google, how is a legitimate trademark owner supposed to police and
enforce his rights?  It is very difficult.  Let me try to place this
in context (at least with respect to the Internet) as a means of
answering your specific question about the required level of
inactivity.  There is a federal law called the Digital Millennium
Copyright Act that permits owners of copyrighted content that is
infringed on the Internet to issue a take-down notice to the web host
of the infringing site.  No further inquiry by the host is needed;
once the host gets such a letter, they have to take down the site.

Note that this law pertains to copyrighted material only--there is no
analogous law with a take-down provision for trademarks.  Thus, the
owner of a trademark who sees infringements on the Internet has to (1)
identify the infringer; (2) identify the host; (3) and send a letter
to the host demanding that they cause their customer to remove the
infringing content.  Nothing compels the host or the customer to do
this other than the threat of litigation.  Fortunately for trademark
owners a recent line of cases, most notable the Gucci case, makes it
harder for web hosts to ignore demands arising out of trademark
infringement.  See http://www.loundy.com/CASES/Gucci_v_Hall.html.  But
the aggrieved party must still file and serve an lawsuit--there is
nothing "automatic" like the DMCA.

Thus, in the trademark realm, there is no magic bullet against
infringements and the owner must do the best they can to police and
enforce their marks.  So, how much lack of enforcement is required? 
There is no clear answer.  Trademark law is extremely fact sensitive. 
At one end of the spectrum, if a trademark owner was on actual notice
of a variety of infringements and did nothing at all to enforce his or
her rights over a period of several years, that might be enough to
create a defense to subsequent enforcement efforts.  At the other end,
if a trademark owner tries their best to address infringements of
which they gain notice but a few slip through the cracks, no defense
likely exists.  There is no bright-line test.

There is a principle in US law called "constructive notice."  Part of
the price we pay for living in a free society is that once laws are
enacted we are on constructive notice of them and are supposed to obey
them--ignorance of the law is no excuse.  The alternative, a police
state, is obviously not desirable.  Thus to a certain extent, we
proceed at our own risk when we engage in conduct that may violate the
law.  This is exactly like your brother's situation.  There are ample
ways to find out if someone claims trademark rights in a good or
service and ample means of determining if a source of a good or
service is an authorized licensed distributor.  The onus is on us to
look before we leap and make sure we are not violating the law before
proceeding with any particular venture.  Courts recognize that the
scope of the problem is so great than the entire enforcement burden
cannot be borne by the trademark owner--citizens must do their part. 
So if I were to buy a gross of T-shirts at a flea market for less than
half of what I could buy them for at a source I know to be an NFL
licensee, some red flags should go up and I should perhaps make
further inquiry before reselling them and getting in trouble with the
NFL.  That's just the way it is in a democratic society. You cannot
turn a blind eye to the facts in an effort to avoid enforcement.

Having said that, trademark law also says that once you have lawfully
acquired licensed product, the original trademark owner cannot stop
you from reselling them using that brand name in your advertising. 
So, if you legitimately buy a gross of licensed NFL T-Shirts and sell
them on your web site, the NFL cannot stop you from using their mark
on you site to resell the shirts.  You can lawfully say, ?NFL T-Shirts
for sale here.?

I hope this provides you with some additional guidance.  The bottom
line: buy from authorized sources and be suspicious.  Failure to be
appropriately suspicious can lead to legal troubles?that may not seem
fair, but that?s the way it is.