LEROC Trademark

[Lory]

but it costs £200 to start invalidation proceedings

plus of course your legal fees and these guys can change £400 an hour

Excuse my absolute ignorance about these matters

Can someone tell me.. Who would 'start/pay for' proceeding, against anyone using the registered 'name'

And how much would it cost?

Would it be Billy's responsibility to keep an eye out for any misuse and to take legal proceedings himself or once registered, do the authorities deal with it?

[philsmove]

It seems there is a general principle at stake here,

I am not an expert on the subject but trademark law was recently changed

And as far as I can make out, there seems to be a greater onus on a business, to check someone does not register a trade mark they are already using

[philsmove]

Would it be Billy's responsibility to keep an eye out for any misuse and to take legal proceedings himself or once registered,

Yes, I think so

[Raul]

I don’t think there is a time limit

Invalidation

but it costs £200 to start invalidation proceedings

plus of course your legal fees and these guys can change £400 an hour

The time limit I was referring to applies between the publication of the application and the granting of the Registration. The onus is on the other users to ensure they object before the registration is granted.

As you say, the invalidation process has no time limit but it is very complicated and costly. The person seeking invalidation would have to prove prior use of the exact mark before the application and give a good excuse as to why they did not object to the original application.

Thinking about it, if Billy's website is correct and the Trade Marks have indeed been registered, his telling us about it now when it has already been done does not appear to be a friendly sharing gesture but rather a stern keep off or you will be sued warning.
The friendly gesture would have been to tell us after application and before
registration.

Although in the MJ world, Leroc is considered to be a generic word, to the general public at large it is definitely not, unlike tango or west coast swing (each word being considered separately). It is quite possible that Billy has indeed registered the term in its most simple unstylised form which would make it possible for him to prevent others from using it. We need to see the actual registrations to work out the exact restricted uses. If Billy wanted to be more helpful he would have shown these.

For most small businesses, sueing others for Trade Marks infringements is a costly business and defending a supposed breach and application for invalidation an even more costly one. A lot of businesses use the Trade Mark as a lion would mark its patch, as a warning, hoping that this will put intruders off without a fight.

[Raul]

Having now seen the actual Registered Marks which were recently granted, my opinion is that users of the LEROC name should be very concerned.

You will note that Billy has registered LEROC in several colours but has also managed to get just LEROC in capitalised writing. (it is actually in thicker type than standard, which is why he has got away with it but close enough to have a claim that others using LEROC in standard capitalisation infringes his rights)

Previous Users of the name, if you want to continue to use the generic term in future make sure that you use the non-capitalised form, or a different capitalisation eg LeRoc. I would advise you to find and collect all your previous examples of use of the name in marketing literature, posters, books, dvds etc and get as much supporting details as possible e.g date used, number printed.

If you are threatened by Billy you will have to rely on these to prove that you were using these and that you had an established use of the name before Billy's registration. In order to support the "generic" use of the word before the registration, you should contact the other previous users and agree to combine your defence and supporting evidence if you are sued.

[philsmove]

The details are here

Trade marks - find by number

It would seem the a logo and typeface have been registered, not the name

[Bluey]

Leroc written all over a venue normally puts me off as, in my experiance, they are normally iffy. Not saying this is the case everywhere, but certainly at the leroc places I have been to.

where are they "Iffy"

[Robin]

I'm surprised that Ceroc Head OFfice hasn't objected to the almost blatant similarities. Strikes me that someone is trying to fool people into thinking that they are in fact ceroc and piggyback from all the marketing

1 letter difference in a strapline ? Similar colours ... hmmmm

Anybody remember an Eddie Murphy film called "Coming To America" ?

[Raul]

Trade Mark Lawyers make a fortune discussing details like different shades of a certain colour (colour codes) styling, fonts and words that would make a trade mark Dictinctive. Ceroc use a background colour where as LEROC does not do so in the application I saw.

Btw have you noticed that LEROC also use the words Dance Addiction. The general guide for the TMO is that no one should be allowed to own any particular generic word of the English Language.

I am not in a position to discuss the rights or wrongs of commercial decisions. I would just say that when it comes to money, lots of people from different sides get grabby, protective or envious. No one is perfect but I would rather mix with people and organisations who do not exude that kind of negative atmosphere.

[Robin]

[snipped] lots of people from different sides get grabby, protective or envious. No one is perfect but I would rather mix with people and organisations who do not exude that kind of negative atmosphere.

Too true. This is rife in the IT world where its become the latest thing in the states to patent something that more or less exists and then sue the companies for infringement - see this in its full glory here

[TA Guy]

Thinking about it, if Billy's website is correct and the Trade Marks have indeed been registered, his telling us about it now when it has already been done does not appear to be a friendly sharing gesture but rather a stern keep off or you will be sued warning.
The friendly gesture would have been to tell us after application and before
registration.

I am not a lawyer blah blah blah, but if I had anything whatsoever to do with 'leroc', I would much prefer the mark had been registered in the Scottish Leroc organisations name and not personally for BC.

Being registered in BC's personal name has some implications as well. I can't think of a good one right now.

[Andy McGregor]

I'm surprised that Ceroc Head OFfice hasn't objected to the almost blatant similarities. Strikes me that someone is trying to fool people into thinking that they are in fact ceroc and piggyback from all the marketing

1 letter difference in a strapline ? Similar colours ... hmmmm

Anybody remember an Eddie Murphy film called "Coming To America" ?

This is exactly what I said some time ago. Change the C to an L and you'd have the Ceroc logo.

This could be called passing off, however, to lodge and objection I believe you'd have to prove that it confused the public in a way that damaged your reputation.

[Lou]

I hope this works, as I'm posting from my phone.

If you are threatened by Billy you will have to rely on these to prove that you were using these and that you had an established use of the name before Billy's registration. In order to support the "generic" use of the word before the registration, you should contact the other previous users and agree to combine your defence and supporting evidence if you are sued.

Thanks for the advice, especially if you are a trademark lawyer, but i don't think you still fully understand the implications. There have been a considerable and disparate number of clubs and organisers who have used this term over the last 20 years. I wouldn't be suprised if it's in the hundreds, but I'm unable to check at the moment. And this doesn't take into account any potential new classes, competitions, weekenders, freestyles, etc. It may not be as well known a dance name as Salsa or Tango to the general public. But the truth remains that it is the name of a dance, and so is a generic term. One that has consistently been free to use for 20 years.

I'm surprised that Ceroc Head OFfice hasn't objected to the almost blatant similarities. Strikes me that someone is trying to fool people into thinking that they are in fact ceroc and piggyback from all the marketing

Spot on, Robin. If it's just about the logo and slogan, I'd expect Ceroc to be the most put out.

I am not a lawyer blah blah blah, but if I had anything whatsoever to do with 'leroc', I would much prefer the mark had been registered in the Scottish Leroc organisations name and not personally for BC.

I can't think of a good reason for either option, to be honest. Both are as bad as each other.

This could be called passing off, however, to lodge and objection I believe you'd have to prove that it confused the public in a way that damaged your reputation.

That's impressive! With one stroke, Billy has damaged the reputation of Ceroc and all other unrelated Leroc organisations!

[Raul]

Thanks for the advice, especially if you are a trademark lawyer, but i don't think you still fully understand the implications. There have been a considerable and disparate number of clubs and organisers who have used this term over the last 20 years. I wouldn't be suprised if it's in the hundreds, but I'm unable to check at the moment. And this doesn't take into account any potential new classes, competitions, weekenders, freestyles, etc. It may not be as well known a dance name as Salsa or Tango to the general public. But the truth remains that it is the name of a dance, and so is a generic term. One that has consistently been free to use for 20 years.

One thing is for sure, no new organisation will be able to use the LEROC name without incurring the risk of being sued by Billy - (we will come to that later). As to the previous and current users, it is all fine saying that it is a generic name used by hundreds, but no one in the hundreds has written to the TMO during the objection period. It would have been relatively easier to get the application rejected then, as any one individual could have done it in his own, now it involves a lot of time and money.

One thing about passing off. If the owner of a Trade Mark allows other people to openly use the mark or something that narrowly ressembles the mark for any length of time and does not prevent them, then this lack of action weakens the legal enforcibility of the actual mark and may eventually render it useless. This is the reason why valuable Trade Mark owners will go to great lenghts to threaten small have-a-go "nobodys".

If what you say about the generic nature of the name is true, I cannot see Billy sueing people who have been using the name consistently up to now and who choose to just carry on exactly as they were. He may but he would have to sue every one of them and even if he sued just one he will probably have a concerted reaction from all concerned.
If he does not, then they will carry on as they were, which means that it does not affect them at all, but it also leaves the door open for new people to take up the use of the name. If they are sued they can cite the hundreds of people who have been openly allowed to use the name and Billy's case will be seriously weakened.

[Andy McGregor]

One thing about passing off. If the owner of a Trade Mark allows other people to openly use the mark or something that narrowly ressembles the mark for any length of time and does not prevent them, then this lack of action weakens the legal enforcibility of the actual mark and may eventually render it useless.

I think the oddest one of these from recent times was the RAF roundel. It's been used off and on by fashion houses. When the RAF recently tried to stop a high street retailer from using the roundel they were told that it was too late and they should have done something about it years ago if they really wanted to lay claim to the mark.

The funny thing is that the roundel was developed to make RAF planes identifiable to their own side so they wouldn't be shot down by friendly fire. That's not the funny thing. The funny thing is that it's been found that the roundel is not stealthy and is too easily seen by modern equipment. Which is a bit worrying if you've got a certain t-shirt from Top Shop

[Robin]

One thing is for sure, no new organisation will be able to use the LEROC name without incurring the risk of being sued by Billy - (we will come to that later). As to the previous and current users, it is all fine saying that it is a generic name used by hundreds, but no one in the hundreds has written to the TMO during the objection period. It would have been relatively easier to get the application rejected then, as any one individual could have done it in his own, now it involves a lot of time and money.

One thing about passing off. If the owner of a Trade Mark allows other people to openly use the mark or something that narrowly ressembles the mark for any length of time and does not prevent them, then this lack of action weakens the legal enforcibility of the actual mark and may eventually render it useless. This is the reason why valuable Trade Mark owners will go to great lenghts to threaten small have-a-go "nobodys".

If what you say about the generic nature of the name is true, I cannot see Billy sueing people who have been using the name consistently up to now and who choose to just carry on exactly as they were. He may but he would have to sue every one of them and even if he sued just one he will probably have a concerted reaction from all concerned.
If he does not, then they will carry on as they were, which means that it does not affect them at all, but it also leaves the door open for new people to take up the use of the name. If they are sued they can cite the hundreds of people who have been openly allowed to use the name and Billy's case will be seriously weakened.

Hmmmm ... what about prior use ? As far as I was aware if you can show that the term is in fact a generic term with established prior use already, then its Billy who will lose out, as he would have to sue and any judge will look at the prior use and judge against him, awarding damages and costs to the defendant and then nullifying the trademark.

So in reality, its just a marketing excercise - if push comes to the shove, Billy would never win in court so its pretty worthless.

[bigdjiver]

Hmmmm ... what about prior use ? As far as I was aware if you can show that the term is in fact a generic term with established prior use already, then its Billy who will lose out, as he would have to sue and any judge will look at the prior use and judge against him, awarding damages and costs to the defendant and then nullifying the trademark.

So in reality, its just a marketing excercise - if push comes to the shove, Billy would never win in court so its pretty worthless.

Think on - What if a competitor wants to start a Leroc venue with advertising and publicity and the local newspaper editors get a letter like the one Billy posted here ?

[Robin]

Think on - What if a competitor wants to start a Leroc venue with advertising and publicity and the local newspaper editors get a letter like the one Billy posted here ?

So why doesn't someone just write to the trademark office pointing out their "mistake" ie that its a common domain term thats been in use for over 20 years and that they shouldn't have granted a trademark for it anyway .

Not that it bothers me

[bigdjiver]

So why doesn't someone just write to the trademark office pointing out their "mistake" ie that its a common domain term thats been in use for over 20 years and that they shouldn't have granted a trademark for it anyway .

Not that it bothers me

As a first step I have already emailed them asking if they do Internet searches, and if not, why not.

[ducasi]

The details are here

Trade marks - find by number

It would seem the a logo and typeface have been registered, not the name

Based on my reading of the trademark website, and this page, I'd say that Billy believes he has registered both his logos based on a capitalised "LEROC", plus the word itself. What I am unsure about is the capitalisation thing...

However, if you think of a trademark like "Fairy" (washing up liquid). I don't suppose that another company could get away with calling their washing up liquid "fAiry".