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Subject:
Intellectual Property
Category: Business and Money Asked by: mikus123-ga List Price: $20.00 |
Posted:
06 Jul 2004 15:37 PDT
Expires: 05 Aug 2004 15:37 PDT Question ID: 370506 |
Hello. Our company has been manufacturing an innovative product for the last 4 or 5 years. When we started the company, one of our first sales calls was to a very significant domestic retailer that I will refer to as X. I spoke with two buyers from X, and they showed an interest in our product. They asked for information, which we sent them, and we also sent them a few samples. We thought that they were going to carry the product during its sell season, but then, all of the sudden, they stopped talking to us. That was in 2000. Since then, those two buyers have moved around at X, but they still work there, and as members of our mailing lists, they have been getting e-letters and mailings from us every few months. Over the last few years, we have made contact with other employees at X. They have shown interest in our proudcts, beyond the original unit, and I considered them a very strong candidate for future business. In fact, my most recent conversation with a buyer at X took place about 6 weeks ago, when I sent a sample in of our newest product. Recently, one of our employees was shopping at X and stumbled upon our proudct on the shelf. As he looked closer, he realized that it wasn't ours at all; it was a full on knock off! Our product has a very strong profile and extremely memorable shape. We consciously integrated that profile into the name of the product, the name of our company, our logo, literature, future products, etc. The shape and functinality of the product are what we are known for. The product on the shelf at X is exactly the same shape, almost the same exact dimensions and made in the same two colors of our original samples! The name is even a near match; they kept that same last 3 letters of our name, and substituted a pre-fix that means the same thing as the beginning of our product and company name! The biggest problem for us is not just the fact that they are carrying such a similar product, we are really worried that they are hurting our brand in the big picture. The quality of this product that X has chosen to stock is really bad, bordering on horrible. It is cheap to the point that it looses its functionality, every corner is cut on it, it has no packaging and the workmanship is extremely shoddy. Basically, its an embarasement to the shelf, and we are worried that people may think that we are responsible for it. We do not have a patent on the product, but we do have several registered trademarks. We can prove that they were sent samples 4 years ago. We can prove that we have been in back-and-forth contact with them. We are worried that X's knock-off our product is so similar in appearance and name, and of such poor quality, that it will confuse customers into believing that we are responsible for manufacuturing that product, and that will hurt our reputation with both customers and buyers from other stores. Beyond this product, we have several others on the market and are planning many more, and damage to our brand may greatly impair our ability to grow as a company. My questions are: is there anything that we can do if we don't have a patent? Does it matter that they are purposely confusing the marketplace and hurting our business? Is there anyway to pursue this without destroying our relationship with this retailer (for other products)? What amount of information is legal for us to release to the press? |
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There is no answer at this time. |
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Subject:
Re: Intellectual Property
From: jurrasic-ga on 07 Jul 2004 01:32 PDT |
There are many aspects of IP. in your case I would suggest you to look into "industrial design". |
Subject:
Re: Intellectual Property
From: arinate-ga on 07 Jul 2004 03:32 PDT |
If you did not let them sign a confidentiality agreement of some sort I am afraid there is not much you can do. The question before releasing information to the Press is: what do you want to achieve with it? You don't want to lose them as a retailer for other products, so I would suggest not too attack them, but simply to make your product more attractive. You are just interested in selling your own product, so you simply want the public to know that your product is better. Perhaps you can make some sort of advertisement in which you just add the word "real" to your punchline..like in " slurpie, the REAL water absorption kit" or "slurpie, the ultimate water absorber". or whatever you can think off that makes your product stand-out. And next time, let somebody sign an agreement before you tell them any details and send them a sample. And in this confidentiality agreement you write down a line in which you say "if the co-operation between the parties is discontinued, all samples and information will be returned to the inventor company". Good luck. |
Subject:
Re: Intellectual Property
From: daniel2d-ga on 07 Jul 2004 22:01 PDT |
As for all legal questions - contact an attorney. If you are running a business than to the business like thing and have an attorney review the facts in this case and recommend a course of action. You can also plan to protect future designs, etc. As for not taking any action because X might, just might, carry your products in the future; why would you want to do any business with someone who appears to have hijacked your product design etc.? |
Subject:
Re: Intellectual Property
From: targususer-ga on 09 Jul 2004 08:00 PDT |
You should not rely on any discussion on Google without first speaking with an attorney. There is no substitute for speaking with an attorney. Only an attorney with specific information about your factual circumstances and familar with your jurisdiction can competantly discuss how to enforce your rights. However, you may wish to be generally informed about your options when you discuss it with your attorney. I assume you're in the United States. You probably have at least two claims. Assuming that the packaging and physical shape of your product have no functional aspect, X's most obvious intellectual property right violation is trademark infringement. If you have registered the name of your product as a trademark, their use of a confusingly similar name would be straightforward trademark infringement. You may be able to file an affidavit for incontestable status for your trademarks, before suing X. This would reduce the kinds of defense X could assert in the lawsuit. Likewise, if you can prove your packaging is distinctive in your industry, then you can sue for unfair competition based on your "trade dress." Both these trademark claims require you to prove a likelihood of consumer confusion. Again, assuming that the packaging and physical shape of your product have no functional aspect, your company can assert a copyright in the product's shape and packaging (as visual/graphic works). Because (on the facts you give above) you have not registered for a copyright, you will not be able to sue on that copyright until you do register. Also, because X started reproducing your product before your registered it, you will not be able to get statutory damages or an award of attorneys fees. You still can get actual damages (which you will have to prove at trial) and an injunction (against future reproduction of your product). I mention copyright because it would be substantially easier and cheaper to prove than any trademark claim. You would only have to prove X's representatives had access to your initial samples and X's subsequent product was substantially similar to your own -- not a likelihood of consumer confusion. |
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