My questions pertain to trademark and intellectual property rights relevant to an upcoming product licensing negotiations with a company that can eat mine alive. An overlong history below may identify details of consequence, but my basic ask is this: Do I own or control any trademark rights to one of my products (LH)*, or to its unique name--now incorporated by others in their knock-offs--given that I have never submitted it for trademark**, but have:1) Manufactured it since 1999;2) Marketed is as LH at multiple international trade shows;3) Advertised by the LH name in regional and national venues;4) Sold directly as LH to retail stores and catalogues, also to wholesale distributors in the US, Europe and Australia;5) Submitted as LH to independent reviews and articles that appeared in multiple US and European magazines, and have been featured as LH on nationally televised fishing programs. I would appreciate and gladly pay for a candid reply. SMNRelated, perhaps.In 1996 I created a manufacturing company specializing in fly-fishing products. I did not expect it to become profitable or grow beyond cottage industry size. Instead, my express (and advertised) intents were these: A. To provide substantial supplementary income to disabled adults living on Social Security Disability, paying honestly calculated piece rates that would compensate at roughly twice the extant minimum wage—seven to ten times the average compensation offered by a county sheltered workshop; B. To demonstrate a profitable model that would encourage other fly-fishing manufacturers to contract light assembly and packaging processes to people with disabilities. This company continues to exist, despite my distracted and dilettante management, and since 2001 has been based at a cerebral palsy center in CA. It has never turned a profit, nor grown much beyond my original expectation, though now it must (or else). It has, however, continuously fulfilled A. above, and for several years, B. as well.*Our flagship products were of my design. In 1998, we were donated an idea and prototype for the LH from a donor who hoped to support work opportunities for the disabled. After testing, I replaced the product’s primary materials, added an element that improved function, and went into production. Even with these modifications, however, it did not appear a candidate for a design patent.**In 2007 a local attorney offered to conduct a trademark search and application, in exchange for a program I would present to his Bar Association discussing my investigative reporting about police corruption in Oakland, CA. (He had learned these received awards from the San Francisco Bar Association, the California State Bar, and a nomination for the Pulitzer Prize for Investigative Journalism.) This atty completed the search and was preparing to file TM when he died. His partners declined to proceed with the application because he was the only remaining member of the firm with this specialty, also because this was “clearly a personal arrangement of some kind.” (True.) I would have pursued TM with another firm—and with vigor, after discovering two companies using my product name, my instructions, my illustrations and advertising copy—but was forced to spend several years resolving health issues of my own. ***Motive, in two parts: 1) Penance, more or less. Prior to starting this company I’d worked with disabled adults for almost two decades. I hated the waste of lives. In the 1980s I developed vocational programs for several agencies and institutions. Among these was a county-sheltered workshop where I discovered my clients were being financially and sexually exploited. (This per Grand Jury findings.) Shortly thereafter, I proposed a public agency-sponsored project to a major philanthropic foundation, but declined the grant offered because it stipulated a limit to workers’ compensation “not to exceed” minimum wage. At that point, starting my own company appeared the only viable option to achieve the goals identified above.2) Money. As in none. I knew my original products would serve a tiny minority of customers in a small market—I do mean “tiny,” as in what you get by cutting a wafer off a flake. My primary occupations at that time were that of a teacher specializing in classes for adults with disabilities, as a book author and writer with regular magazine columns, and as an AFTRA voice-over “artist.”
Optional Information: Country relating to Question: United States State (if USA): Washington Already Tried: Discussing this situation with a business developer, and educating myself on-line.
Thank you for the post, I am happy to assist you by answering your questions. Is your XXXXX XXXXXterally "LH"? Also, to the best of your knowledge were you the first to use your mark in the stream of commerce?
MShore:Sorry, I'm not impatient, but from what I see on this board, but I had password XXXXX and it doesn't look my reply to you went through. If not, please let me know.
Thank you so much for the follow up Seth, your reply did not go through. Please republish at your convenience.
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Aha. 1) The product's name isXXXXX which is how it appears on packaging, and in product descriptions and reviews. My company's is MidStream, however, and so it’s sometimes identified as the MidStream Landing Hand.
Like the product, "Landing Hand" was unique, as verified by the 2007 TM search. Nothing close. That said,
For several years I sold to Orvis, which (without discussion) called it the Orvis Landing Hand. Years later, Landing Hand was co-opted by CA shop that convinced an importer to produce a “Landing Hand” knock-off; an MI outfit did something similar. The CA shop and MI outfit both backed off, probably because they feared I would slaughter them in print. (The distributor continues to use the name.)
This issue's come up again now. The company I'm negotiating with tomorrow, Jim Teeny, Inc, buys from me, but labels and markets "The Jim Teeny Landing Hand." (Ironically, Teeny's gratis endorsement has been on my LH packaging for years.) Jim's not a predator, quite. He is an LH fan whose company is in trouble, who believes the LH can save him. Jim's made many, many vague overtures, which I declined to consider: he wanted to produce it overseas, and I wanted to reserve assembly and packaging for the cerebral palsy center. That situation’s changed. For one thing, Teeny's been marketing hard and has just placed the LH in Cabela's; also, another distibutor scheduled an August order so large it can only be Bass Pro. I can't meet those quantities without a complete restructuring and major investment. At the same time, the center's workshop is now reduced to five older workers, who I can keep busy with growing sales of other MidStream products. It no longer handles UPS shipping--big problem--and has been essentially abandoned by the administration and Board of Directors.
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Also, where the Center's concerned, I've paid my dept. While writing its PR and journal I discovered documents falsified by the Board, along with IRS violations and outright looting. I passed these to the center's dynamic Director at the time. She enlisted an atty with CP. Result: the center received direct control of a $20 million endowment, also $15 million in property. (Of course, the hastily assembled new board promptly fired the Director, and replaced me with the Board President's wife.) Finally and frankly...I'm cashed out. My mother's urgent, and more urgent medical issues necessitated I quit teaching at my college, and cost me $8,000 per month for a year until I tore her long-term insurance company open to the bone. I've got kids at home on their way to college and staggering med bills of my own, so if I can make some money now, I better.
Thank you Seth, from your description the basis of your claim of entitlement to the mark is common law trademark rights, which you have apparently secured. But bear in mind that common law trademark rights, as opposed to federally acquired rights, are restricted to the geographic location where the mark is used in commerce. Therefore, if your sales are exclusive to within the state of Washington, then your rights are only valid in WA. Please let me know if you need additional guidance.
Experience: Regularly draft and negotiate IP contracts/deals.