Resolving Intellectual Property Rights

Resolving Intellectual Property Rights

ResolvingIntellectual Property Rights

ResolvingIntellectual Property Rights

SimplyGreen Products (SGP) has been using the product name “SafePac”since 2008. The company’s inability to register or trademark itmeans SGP would play second fiddle to Safe Choice’s owner of thenames “SafePacs” and “SafePacks” since 2002, which accordingto the Trade Mark and Patent Office, is registered and is found intheir database. Given the legal issues that comes with trademarks andproduct or company names, Engdahl (2010) cautioned that a companyshould not register an already existing product name since it doesnot give one any form of trademark protection. In our case, theproduct name is already registered under the USTPO.

Whetheror not to register “SafePac” as our company’s product name andconsidering it is already under another company’s control, theright procedure to follow is to first consult the USPTO. Engdahl(2010) noted that continuous use of a trademark, which is registeredby another company may bring confusion and constitute a false origin,and is likely to confuse the customers of the likely origin of theproducts. I would therefore advise to first seek consultation beforemaking a decision.

Ifthe USTPO grants registration of “SafePac” to be SGP’strademark would mean the Trademark Dilution Revision Act of 2006 isviolated. This is because under the act, dilution of a product nameoccurs by “blurring” of an already registered famous mark.Engdahl (2010) defines the term “blurring” to be an “associationthat arises from the similarity between the trade name and that ofanother mark, which impairs its distinctiveness of the trade name.”For example, the use of more than one “safesomethings” in ourcase would mean our “SafePac” would impair the other company’sdistinctiveness of SafePacks’ Safe line.

However,the TDR Act would be violated but it also provides an injunctiverelief, which in specific circumstances, would provide a solution tolost profits, damages, treble damages, and the spoil of infringingdamages. Its violation is clarified by the act considering the use of“SafePac” and “SafePacks” by the two companies also result intarnishment of the product name over the other. Engdahl (2010)observes that the use of a product name, while ignoring an alreadyregistered one would spoil the reputation of the other one.

TheAnticybersquatting Consumer Protection Act (ACPA) applies to anycompany or person that tries to traffics in, registers, or appliesthe use of domain name, which is confusingly similar or identical toa distinctive product name. In our case, considering we purchased thedomain name “safepac.Com”, the Safe Choice Company may attempt toaccuse Safe Green Product of cybersquatting and attempt to have ourdomain name transferred to their ownership. In our case, we will haveviolated the Anticybersquatting Consumer Protection Act by continuingto have control over the domain name.

Accordingto Engdahl (2010), the ACPA is applied to all the domain namesirrespective of whether they were registered under the respectivecompanies, before, on, or after the act was enacted. In our case, theact may accuse us of using the domain name, which is almost identicalto that of Safe Choice’s product name. However, the accusation maybe lenient on our side because the domain name safepac.com was boughtwith the knowledge of existence of the other company. Bringing toyour attention the likely of the act’s impact on our company sincein such a case, the court may award statutory damages in our case ofcybersquatting (Engdahl, 2010). This is because the court does notdiscuss in detail their decision behind the rationale of awardingsuch statutory damages under ACPA 45. The violation is also a resultof ignorance or registering the domain name and not the trademarkname.

Asthe Head of Marketing at the Simply Green Products, my resolutioncomes at the time when the company is facing intellectual propertyrights issues. The use of SafePac the company’s biodegradable packswould likely result in Safe Choice Company terming Simply GreenProducts as an alleged infringer, which my resolution in regard tomarketing must be established to be a threshold issue. To continuewith marketing options available at the company’s disposal wouldmean all activities towards selling the product to the customer meansit will be in “commerce” or rather would create a likelihood ofblurring or confusion to the customer. Continued use of the productname would spoil the company’s reputation, especially when SafeChoice decides to file a case against the company.

Marketingour product as a company means the customer is likely to confuse itwith that of Safe Choice even when the products have a differenttarget market. Engdahl (2010) noted that a “likelihood ofconfusion” is the main focus when infringement claim is filed, andwill likely jeopardize all the marketing efforts. Marketing of ourproduct will also result in the consumer to view the infringed markand assume that our product is associated to that of Safe Choice. Myresolution would affect the company’s marketing options throughcomplexity in confusion analysis. This will be when the marketedproduct does not relate or directly compete, but there is intensityin the degree of similar product name is evident. Additionally, myresolution to push for the product will also be greatly influenced bythe added element of preference in the registrant of the trademark.

References

Engdahl,S. (2010). Intellectualproperty rights.Detroit, MI: Greenhaven Press.