Norton trade mark and the new owners

Mart UK said:

As said above, you can lose your rights to exclusively own and use a TM if you don't enforce those rights once you become aware of an infringement. If a 3rd party has been using the TM for years without the agreement of whoever owned it over those years and have done so without being challenged, the fact a new owner has turned up and now wants to enforce the TM, doesn't mean they can. The new owner only gets the rights the previous owner can pass on.

On the other hand, if users have been licenced, the new owner probably acquired the previous owner's rights under that Licence. That might entitle them to give notice to terminate.

My money is on the cock-up scenario. Folk have probably been using the TM for decades without being adequately challenged. NOC could probably register the TM under the appropriate class for clubs and societies and the services they offer. If the new 'owners' try to extend their TM registrations to cover this, NOC would need to issue an objection.

My money is also on lawyers and patent agencies being the only ones who make any money out of this squabble.

Click to expand...

Correct, you can lose rights to a TM for not enforcing it or policing the licences (BSA in 1998/9 - see UKIPO) However, you have to prove that you use it in the first instance - look at Thomas Norton and how TVS Norton have opposed him, all the details are on the US TESS website. You can't defend something you don't use.

[/QUOTE]

Madnorton said:

However, you have to prove that you use it in the first instance

Click to expand...

'Use' by the owner can be achieved where the owner formally licenses someone else to use it.

e.g. Norton has a registered TM for clothing and has, ever since, licensed another firm to produce it, then they have a live TM to enforce.

Not quite, it may not be licensed for that for that market area. It would also depend on the licence type. The licences held by Norton can be found online in the Norton America agreement / TVS Norton dated May 2020.

Something I find interesting is that on their web site they are making no attempt to protect the name or logo. Nothing I can find is marked as a trademark, registered trademark, or copyrighted. Look at the logo at the top of this page - marked as a trademark. As I understand it TM has no legal standing - it let's others know that you consider it to be unique to you. R on the other hand is registered with the patent office and gives exclusive rights to holder - essentially a patent. They also don't show what they consider to be their protected symbols, logos, or images.

Madnorton said:

Not quite, it may not be licensed for that for that market area. It would also depend on the licence type. The licences held by Norton can be found online in the Norton America agreement / TVS Norton dated May 2020.

Click to expand...

Yep, in that case it wouldn't be a 'registered TM for clothing', as in the e.g. Being a bit slow, don't follow the 'licence type' point?

I found this a quick search:

How long does a trademark last in the US? In the United States, a federal trademark can potentially last forever, but it has to be renewed every ten years. If the mark is still being used between the 5th and the 6th year after it was registered, then the registration can be renewed.

So, 2 questions: Did the trademark get renewed when Norton motorcycles ceased production? How much time elapsed between the end of production and Garner's acquisition of the rights?

In another article I read the trademark owners have to show they are actually doing commerce employing the trademark? As has already been mentioned it's the attorneys that make the money. If I got a letter telling me to cease and desist using any trademark it would quickly translate to more attorney's fees and time in court which, in all likelihood not be in my backyard. Now it's' bullies...

Best.

RoadScholar said:

I found this a quick search:

How long does a trademark last in the US? In the United States, a federal trademark can potentially last forever, but it has to be renewed every ten years. If the mark is still being used between the 5th and the 6th year after it was registered, then the registration can be renewed.

So, 2 questions: Did the trademark get renewed when Norton motorcycles ceased production? How much time elapsed between the end of production and Garner's acquisition of the rights?

In another article I read the trademark owners have to show they are actually doing commerce employing the trademark? As has already been mentioned it's the attorneys that make the money. If I got a letter telling me to cease and desist using any trademark it would quickly translate to more attorney's fees and time in court which, in all likelihood not be in my backyard. Now it's' bullies...

Best.

Click to expand...

Norton America held the active trademarks for quite a few countries. No issues when Garner got them.

Correct, but the rules changed around 2017 to stop speculators and gun jumpers getting in first.
There are 3 licence types, non-exclusive meaning several different companies can have a licence to make and or use the same items for sale, this includes the TM owner. Sole licence, meaning that only one company and the TM owner can make items for sale. And then the Exclusive licence, meaning only the company with the exclusive licence can use the TM, this EXCLUDES the TM owner.
If you don't have any of the above you can use Prior Use as a defence to use the TM. In the past if you sold one T shirt in the last 12 months that would have constituted prior use, but not these days, it has to considerable and consistent ie large sums over a prolonged continuous period of years.
As you can see, things have changed in the past 5 years or so, you can't sit on a TM and not use it, likewise if you apply for a registration you need to prove intent to use as part of the application.

Wonder if these guys have had a letter.

kommando said:

Wonder if these guys have had a letter.

Click to expand...

Or the local council responsible for this outrageous infringement ...

I've had a second thought, and that this might in some fashion be our own doing, not directly but as a whole, each generation is helped by the previous to do better, learn more and get higher education. and its those centres of higher education where things have gone wonky...where edumacators instill poor or even bad value systems which the young ones bring forward to commence their chosen profession... now in the case of laywers, we've already seem how low these guys can go. almost like a gun, point and shoot and the young ones will crank out any kind of accusatory, inflammatory letter as needed.

I wonder do the legal councilors actually place their name on the document they issue or do they hide behind the big corp entity?
(any misspelling is entirely intended)

marshg246 said:

Something I find interesting is that on their web site they are making no attempt to protect the name or logo. Nothing I can find is marked as a trademark, registered trademark, or copyrighted. Look at the logo at the top of this page - marked as a trademark. As I understand it TM has no legal standing - it let's others know that you consider it to be unique to you. R on the other hand is registered with the patent office and gives exclusive rights to holder - essentially a patent. They also don't show what they consider to be their protected symbols, logos, or images.

Click to expand...

Up to about 25 years ago, when I last looked at it, Australia had very similar TM laws to the UK. If that's still the case, the R in a circle markings are not as strictly required to be displayed as they are in the US. You would still have an enforceable trademark without that, provided it is registered for that class of goods or services. It always used to be more a US thing that, being a good idea, firms copy worldwide. For all I know, the law now requires that in Oz, but it hadn't used to.

Also, it is a 'tort' (an actionable civil wrong) to produce something and mark it in such a way to intentionally pass it off as being produced by someone else. Known as 'passing off'. Again, I think that was common to UK and Australia. Here, you don't need to hold a registered trademark, but (IIRC) you do need to show you have suffered harm by someone passing off their work / products as your own. Higher burden than registered trademark infringement.

Madnorton said:

Correct, but the rules changed around 2017 to stop speculators and gun jumpers getting in first.
There are 3 licence types, non-exclusive meaning several different companies can have a licence to make and or use the same items for sale, this includes the TM owner. Sole licence, meaning that only one company and the TM owner can make items for sale. And then the Exclusive licence, meaning only the company with the exclusive licence can use the TM, this EXCLUDES the TM owner.
If you don't have any of the above you can use Prior Use as a defence to use the TM. In the past if you sold one T shirt in the last 12 months that would have constituted prior use, but not these days, it has to considerable and consistent ie large sums over a prolonged continuous period of years.
As you can see, things have changed in the past 5 years or so, you can't sit on a TM and not use it, likewise if you apply for a registration you need to prove intent to use as part of the application.

Click to expand...

That was the case 25 years ago too and long established at that time. OP was for Australia. Hopefully the club will get advice, as there are plenty of ways through this.

Mart UK - ya, my main point earlier. They would have to defend their trademark in each country individually. I think generally, courts in most countries respect the patents and trademarks of others, but when you make no attempt whatever to make it publicly known that you have a patent or trademark, it would be very hard to defend in the US. Especially since there were some very long periods when nothing seemed to be happening with Norton.

I can't imagine how it works in the UK - you go to the patent office, register a trademark, stick it in your back pocket, and expect people to know you have it Or, as I understand it (don't quote me - I don't really know) , you transfer the old company name from a Canadian company to a US holder (who had it for 15 years?) to a reborn UK company that failed and was bought by a company in India and then expect the world to know you have it?

Also, what is/are their trademark(s)? The logo on their web site is the one that includes "motorcycles" underneath. We haven't seen the letter, I wonder what exactly they are being told to quit using. Green Blob? Green Stylized Blob, Stylized Norton in several ways with and without "motorcycles", in what colors, and so on. It would be real interesting to know what is registered with various governments around the world, if anything.

BTW, I get a couple of "official" emails a year telling me to cease using gregmarsh.com and Greg Marsh Enterprises. I got the domain name in the 90s from the InterNic before it was privatized. The "official" emails offer to allow me to continue using it for a fee. They are obviously scams since the US Government assigned me the domain name and I have continuously used it since. My company is is also registered, but not a registered trademark so someone in a different state (or country) could begin using it.

There's a company in the US called Monster - probably best known for their audio and video cables. Some years back (2004 ish) they had a campaign to become the exclusive owner of the word "monster" and brought litigation against other companies that used that name, including Disney for the "Monsters Inc" animated movies and some poor woman who sold monster themed costumes for Halloween. They made a lot of enemies in the audio community for being dicks.

maylar said:

There's a company in the US called Monster - probably best known for their audio and video cables. Some years back (2004 ish) they had a campaign to become the exclusive owner of the word "monster" and brought litigation against other companies that used that name, including Disney for the "Monsters Inc" animated movies and some poor woman who sold monster themed costumes for Halloween. They made a lot of enemies in the audio community for being dicks.

Click to expand...

And, Monster (monster.com) is probably the biggest job listing site in the world - especially used for IT positions. I probably hired 250 people over my years as a defense contractor through them! I was using them in the 90s and they are still around today.

Looks like theyve only used the new one since 1916 .

Matt Spencer said:

Looks like theyve only used the new one since 1916 .

Click to expand...

I've a query about Norton's first TT win, namely didn't they win using a Peugeot engine?

maylar said:

There's a company in the US called Monster - probably best known for their audio and video cables. Some years back (2004 ish) they had a campaign to become the exclusive owner of the word "monster" and brought litigation against other companies that used that name, including Disney for the "Monsters Inc" animated movies and some poor woman who sold monster themed costumes for Halloween. They made a lot of enemies in the audio community for being dicks.

Click to expand...

And making shitty cables.

Bernhard said:

I've a query about Norton's first TT win, namely didn't they win using a Peugeot engine?

Click to expand...

Yes

That picture is of a later engine with the Norton logos.
Seems Peugeot where not protecting their trade mark, must have been busy collecting frogs and escargots or something!