Trademark Squatters 0002 – Welcome to Parry Sound

Trademark Squatters have become a huge problem in the last couple of years. The value of a mark in commerce can be immense, but often marks are not registered, with the owner depending upon common law recognition of rights.

Trademark Squatters take advantage of inability of government agencies to check the truthfulness of statements made when a mark is registered, and the lack of sanctions for lying under oath. Most especially the lack of sanctions means that there is no effective action taken against Trademark Squatters.

The Government Agency which supposedly exists to protect the Mark Owner instead protects the Mark Squatter against the Mark Owner. When ownership is finally settled at great cost to the Mark Owner, the Mark Squatter walks away unscathed, with the profits that he or she has accrued from his or her actions, ready to do it all again, against some other unsuspecting Mark Owner.

In all cases I will be working with published information. It is possible that this information may not be up to date, or may not accurately reflect the current status of the situation. If I am supplied documentary evidence which shows a different status, I will publish an update. In cases where a lawsuit ensued, and the settlement was sealed, I will not update the published information, unless I am provided with:

1) A copy of the settlement
2) Permission to publish the settlement

While I realize this may cause problems for one or more of the parties involved, I believe in only publishing things I can reference, so that those who read this have an evidence trail to follow.

Note that the above text will appear in every article, if you’ve read it once, feel free to skip down to the divider.

*****

You wouldn’t figure that the term “Welcome to [insert place name here]” could be trademarked, other than by the place itself. Guess what – you’d be wrong.

A man named Nick Slater managed to trademark the term “Welcome to Parry Sound” in Canada.

Parry Sound is a really nice place. I spent a lot of my youth in the “Near North” or “Cottage Country” as it’s often called. As someone who’s travelled a lot, I still regard it as one of the most beautiful places I’ve ever seen.

I love the north so much, I’ve actually moved there. I live about four hours north of Parry Sound. Yes, it is snowing today. This is normal at this time of year…

Back to the trademark… According to the registration that is online at the Canadian Intellectual Property Office, Slater filed his application on February 8, 2007. The registration was granted on January 28, 2009 to Slater’s company, ZEUTER DEVELOPMENT CORPORATION. Slater is a resident of Parry Sound, and his company address is there.

Here’s the fun part. You can object to a trademark only before it is finalized. Since the Town of Parry Sound was unaware of Slater’s actions, they didn’t object. Once a trademark is finalized, you can’t object. Of course if you didn’t know about the trademark… Catch 22.

Slater claims he has been using the phrase since 1997. I remember hearing the phrase in the late 1960’s. While he may not be lying about his use of the phrase, he isn’t the first to use it. Unfortunately the law doesn’t seem to understand this distinction.

However the trademark should not have been issued in the first place. According to the Justice Department website:

13. (1) A distinguishing guise is registrable only if

(a) it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration; and

(b) the exclusive use by the applicant of the distinguishing guise in association with the wares or services with which it has been used is not likely unreasonably to limit the development of any art or industry.

Marginal note:Effect of registration

(2) No registration of a distinguishing guise interferes with the use of any utilitarian feature embodied in the distinguishing guise.

Marginal note:Not to limit art or industry

(3) The registration of a distinguishing guise may be expunged by the Federal Court on the application of any interested person if the Court decides that the registration has become likely unreasonably to limit the development of any art or industry.

R.S., c. T-10, s. 13;
R.S., c. 10(2nd Supp.), s. 64.

Note the bolded part. Since the first two word of the phrase are utilitarian, this Trademark should have never been issued, or at least if it was issued, it should have been issued to the Town itself, not a private citizen.

The Town of Parry Sound has since filed their own trademark application. Exactly how this is going to play out, I don’t know. I do know that I’ve sent emails to several Members of Parliament about updating the Trademark Act.

Regards

Wayne Borean

Thursday November 1, 2012

Further Reading

Man Trademarks ‘Welcome To Parry Sound,’ Demands Money From Parry Sound Organizations

Not welcome in this town

Parry Sound Trademark Protest

‘Welcome to (town name)’ trademarked

Parry Sound residents only want to “Welcome You”

Town of Parry Sound website

Town, resident trade barbs over trademark

Slater’s “Welcome to Parry Sound” website

Advertisements

Outback Zack's Australian Animal Fire Victims Appeal

Outback Zack's Australian Animal Fire Victims Appeal
Outback Zack's Australian Animal Fire Victims Appeal

I’m looking for a video. Does anyone have on VHS, Beta, PVR, or whatever, a copy of Outback Zack’s Australian Animal Fire Victims Appeal that they could send to me? If so, you’ll earn my undying gratitude for all of five minutes (I have a short attention span).

Regards

Wayne Borean

Sunday February 5, 2012

 

Intellectual Property Primer – Part One – Trademarks

This is the first of a series of posts on what ‘Intellectual Property’ or ‘IP’ is, and what purpose the concept serves. The series was inspired by the realization that the vast majority of the people currently discussing Intellectual Property Issues on the internet have very little knowledge of the subjects they are discussing, or have specialized knowledge of a particular sub-section, and are trying to generalize their specialized knowledge in ways that are inappropriate.

By attempting to educate everyone, hopefully we will be able to raise the level of discourse, and address some of the common misconceptions. In many ways I’m one of the better able to undertake this task, While I’m not technically an expert, over my years in industry I’ve worked with all three of the concepts that make up ‘Intellectual Property’. The term Intellectual Property in itself is a misnomer. There isn’t anything ‘Intellectual’ about a Trademark, even though Trademarks are the most important type of IP, which is why I prefer the term ‘Intangible Property’.

There are three different types of Intangible Property – Trademarks, Patents, and Copyrights. These are vastly different concepts used in different ways. A large part of the confusion on the internet is caused by a misunderstanding of the three terms, even though the terms themselves are very simple. The laws covering the concepts are far more complex. If you have legal issues which involve Trademarks, Patents, or Copyrights, I strongly suggest that you hire a legal professional. This may sound strange coming from someone who has been very critical of legal professionals many times in the past, however my criticisms have never been of the profession itself. All of my criticisms have been of specific statements and actions by the professionals involved, which I disagreed with.

This is a simplified explanation, meant for the layman. For an in depth explanation, you need to see an expert.

Trademarks

In many ways Trademarks are the oddity of the Intangible Property group. While both Patents and Copyrights cover creative acts by artisans, artists, or authors, a Trademark is actually a form of consumer protection. Trademarks are an ancient concept, which can be traced back to the Roman Empire, where weapons manufacturers marked their production. Each manufacturer used a unique mark, which allowed the Roman Legionnaire to know who’s weapon he was using.

Because each of the different manufacturers used different materials and methods to manufacture the weapons that the legionnaire was using, a sword from one manufacturer might be more suitable for use in one situation than a sword from another manufacturer (for example the cold in Northern Britain could mean that one make of sword would be more susceptible to cracking in wintertime use). Obviously being able to pick the correct weapon for the situation was important to the man on the spot. It was also important to the Empire as a whole. Being able to identify and remove from service weapons that had proven not suitable for use contributed to the stability of the Empire.

Criminals immediately recognized the importance of Trademarks. The use of the mark of a highly reputable weapon manufacturer meant that a cheaply made sword could be sold for a higher price. Of course if the real manufacturer found out, the criminal could end up dead. Since there were (as far as we know) no trademark laws at the time, the only answer to trademark abuse was to take action yourself. Or hire the historical equivalent of Tony Soprano to take action for you.

And of course when the concept of a trademark was invented, the vast majority of the population was illiterate. The word ‘Apple’ spelled out would have meant nothing to most people, but the symbol of an apple with a bite missing would have been easily understood. This is why many trademarks today are symbols, though words and phrases are used as well.

Today, unlike in Roman times most countries have laws regulating trademarks. The laws vary from country to country, but one point that is common is that you aren’t allowed to trademark someone else’s concept. This is supposed to protect both the consumer, and the trademark owner.

In other words, if you set up a business, I’m not allowed to trademark your business name, even if you haven’t filed for a trademark. Trademark Trolls, who trademark a business name, and then threaten to sue the business owner, are a rising problem in part because of the costs of fighting an improper trademark suit, and also because there is no effective punishment for filing an improper trademark. And calling in Tony Soprano isn’t legal, even if it might be effective.

Trademarks are extremely valuable to consumers. If you hate Apple products, it’s of value to you to see their trademarked logo, so you can avoid buying. If you love Apple, their trademarked logo is also of value to you, as you know the product is by a manufacturer you like. Both ways, you the consumer, win. Even if you don’t care about the company right now, the easy identification allows you to buy the product, evaluate it, decide if you like it, and then avoid or search it out in future.

Trademarks are often confused with Branding. Branding is an attempt to give a product or company an image. Everyone has seen the Mac-PC commercials. Mac is this cool dude, while PC is a stodgy goof. The idea being, that if you buy a Mac you are cool. Oh, the commercials also cover the other advantages of buying a Mac, such as their superior security model, but the main aim is to make you think that buying a Mac will make you cool. It won’t make you cool of course. But they try to make you think it will.

A memorable trademark is often simple. Everyone in North America knows what the Golden Arches stand for, whether they like eating at McDonald’s or not. The Apple with the bite out of it. The Three Pointed Star which represents Mercedes Benz (Daimler Benz outside of North America).

Trademarks, a consumer protection measure, shouldn’t be considered similar to Copyrights. Copyright is a limited term monopoly given to the author or artist who produces a work. Trademarks, a consumer protection measure, shouldn’t be considered similar to Patents. Patent is a limited term monopoly given to an inventor for an invention.

Trademarks on the other hand, are forever. As long as the mark is in use, it remains the property of the holder (it can also remain their property if it’s not in use for periods of time, check the law in your jurisdiction). The Disney Company holds a trademark on Mickey Mouse. It will still be valid, even if the copyright on a work that features Mickey Mouse expires. Never mind the patent on the camera that was used to shoot the film.

Remember – Trademarks are the oddball of Intangible Property. Unlike Copyrights and Patents, a trademark doesn’t represent a creation, even though creativity was involved in choosing the mark, and designing the logo.

Regards

Wayne Borean

Sunday October 17, 2010

Monster Cable

I bought a new Fender Stratocaster today. It was quite a search, and I ended up with a beautiful Left Handed Standard Strat in Candy Apple Red with a Maple neck. I ended up visiting a lot of stores to find exactly what I needed. Now any musicians among you will be shaking your heads. Strats are pretty damned common.

Problem is my left wrist is toast. It doesn’t bend, so I can’t finger chords with it. This is why I stopped playing ten years ago. Playing right was impossible, and at the time I didn’t think switching to playing left (even though I’m left handed) was a reasonable option.

Then I got lucky, when I went with my wife on a guitar hunting spree. I saw a left handed guitar in a store, tried it, and found that all the fingerings I remembered from playing right, just worked. So I decided to switch, and then the problem was finding a guitar. Yeah, I know most guitar stores will order a guitar in for you. But I refuse to buy anything I haven’t played. So I started searching, and today I got lucky.

And what’s the one thing you need with an electric guitar? A cable. I have several amps, and I have cables, but one thing I learned is that you always keep a cable in your gig bag.

So I go wandering into the cable section, and guess what the first brand I see is? Monster Cable. Now this is probably silly of me, but I expect that the companies I deal with to operate in a moral and upright manner. If they don’t, I buy elsewhere. As a musician and a programmer, I know more about “Ineffectual Property” than most people. While I’m not a lawyer, I’ve had to learn the basics, because it affects what I do.

Monster Cable has been involved in a wide variety of spurious trademark infringement cases. Cases where, Monster Cable has tried to use its size and strength to attack a variety of organizations that use Monster as part of their name.

This is not acceptable to me. I had a very interesting conversation with several of the staffers at the store, which is one of the major musical instrument distributors in Canada. They weren’t aware of what Monster had been doing, and at least one of them was totally horrified at what they learned. The Google Search really blew them away.

I have a lot of cables – I have one in each guitar’s gig bag (I have a left handed Yamaha bass as well), one with each amp, and 5 or 6 with the recording equipment, one with my wife’s Fender Semi, and one with her Peter Cox acoustic (it has a detachable pickup). But I didn’t know Monster had an audio line. Since I do now, I’m telling all the musicians I know to avoid them, and suggesting that our local stores not stock them. And I know a hell of a lot of musicians.

If Monster wants my business, they can show so by their behavior. If they don’t, they can keep on acting like Monster Idiots, and loose business.

Oh, and as for Noel Lee? He’s a lying bastard. Trademark law requirements have nothing to do with what his company is trying to do.

I am emailing Monster Cable a link to this article, and will post their reply, if any.

Update 1 – I’ve just been told of a report on cables that was broadcast on TV in New Zealand.

Update 2 – Monster Cable has not responded. Since they haven’t responded, I will assume that they are in agreement with what I said.

Shareaza

For those who don’t know, Shareaza is a Peer to Peer client, that works on the Gnutella, Gnutella 2, and EDonkey networks. It is an open source project, under the GPL V2.

Recently they lost their domain – Shareaza.com. Apparently the French Music Industry Association has cyber squatted their original website, and then proceeded to use the site to distribute a fake Shareaza client – a clear case of copyright infringement. The same organization is now trying to register the Shareaza name as a trademark, a blatantly illegal action.

So we have a bunch of lawyers, and a scummy client attacking free software devs. Pass the word along – scum like these people deserve negative publicity. The article I read is here:

After Hijacking Site, Scammers Move to Seize Shareaza Trademark

The fake Shareaza is named Discordia Ltd.

The law firm is Meister Seelig & Fein of New York, though I think that they should be named Dewey, Screwem, and Howe.

Oh – and the French organization is “La Societe Des Producteurs De Phonogrammes En France (SPPF)”