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This is an interesting read regarding the use of the term NATO when it comes to watch straps and the lawsuits that are being brought by International Watchman, its trademark holder.
This is an ongoing issue as there are a strap retailers attempting to push others out of e-commerce websites as well as IWW continuing to bring additional infringement suits.
IMO - it's in your best interest to give this a read and consider how this trademark (bogus IMO) of this common term (NATO) is being used to bully strap retailers. Take note of this issue and keep it in mind when selecting your next "NATO" strap for purchase.
Companies involved in this case: International Watchman, Inc.; The Nato Strap Co.; Expo International, Inc.; Clockwork Synergy, LLC; ADNweb, LLC; Worn & Wound
From Intellectual Property Law Daily, October 17, 2014
“NATO” and “NATO G-10” marks not proven generic for watches
By Peter Reap, J.D., LL.M.
Several entities and individuals (the “defendants”) who had been sued by International Watchman, Inc. (the “plaintiff”) for trademark infringement failed to establish that the plaintiff’s registered marks “NATO” and “NATO G-10” for “watches; watch bands and straps” were generic as a matter of law, the federal district court in Cleveland has decided (International Watchman, Inc. v. The Nato Strap Co., October 16, 2014, Gaughan, P.). Thus, the defendants’ motion for summary judgment of trademark invalidity for genericness was denied.
Background. After registering its two marks, the plaintiff filed this lawsuit asserting two claims for relief against each defendant. The plaintiff first alleges that the defendants engaged in both unfair competition and trademark infringement in violation of the Lanham Act. In its second claim, the plaintiff also alleges that the defendants engaged in unfair competition under state law.
The defendants moved for summary judgment seeking to invalidate the plaintiff’s trademarks on the grounds of genericness.
Analysis. The defendants argued that “NATO” and “NATO G-10” are generic terms for a certain military style watch band. According to the defendants, these terms are commonly used in the watch industry to describe a watchband comprising a “flexible (fabric or leather) strap that is one piece, fits under the spring bars of the wristwatch, so that it will not fall, if one spring were to break, and includes a plurality of rings for securing the loose end of the strap.” The defendants argued that the watch industry, journalists, members of the public, and the plaintiff itself all use the terms “NATO” and “NATO G-10” to generically describe these types of watches and watch bands.
In response, the plaintiff argued that its trademarks, by virtue of their registration, are entitled to a presumption of nongenericness. In addition, the plaintiff pointed out that many of the defendants’ citations are to Internet postings, which the plaintiff claimed are inaccurate. The plaintiff further supplied the court with a survey.
A generic or common descriptive term is one which is commonly used as the name or description of a kind of goods. It cannot become a trademark under any circumstance, the court noted.
“The primary significance of the registered mark to the relevant public...shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it is used. Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 406 (6th Cir. 2002). To determine whether a mark is generic, the court must look to the “relevant public.” Ordinarily, “it is the term’s meaning to consumers, not professionals in the trade, that is the test of genericness and descriptiveness for ordinary consumer goods.” Id
Here, the defendants pointed to Internet publications from various sources demonstrating a generic use of the terms “NATO” and “NATO G-10.” By way of example, the defendants pointed to: (1) An advertisement from Amazon for a “Seiko 5 Sports #SRP277 Men's Military Nato Black Grey Band 100M 24 Jewels Automatic Watch”; (2) Blog from a London shopper from 1999 indicating, “Three others had mostly junk, although there were NATO straps at 5 pounds each”; and (3) Internet publications suggesting that “at least 63 prominent watch companies include ‘Nato’-straps with their watches.”
The defendants also pointed out that the plaintiff itself used the term “NATO” generically. For example, an order placed by one of the plaintiff’s reseller customers requested the purchase of “Nato style straps.”
In response, the plaintiff provided an affidavit from its president. He averred that there were a number of references throughout the industry to the types of watch bands at issue in this case. Some are generic, while others are nongeneric.
The plaintiff further provided a document entitled “Consumer Survey: Public Views Concerning the Primary Significance of NATO and NATO G-10.” The results of the survey showed that anywhere from 89.22%-94% of people believed “NATO” to be a brand name and 94.25%-97% of people believed “NATO G-10” to be a brand name.
In addition to presenting its own evidence, the plaintiff disputed the evidence relied on by the defendants, the court observed. According to the plaintiff, many of the defendant’s references were inaccurate and most of the watchmakers did not sell “NATO” bands.
Viewing the facts in the light most favorable to plaintiff, reasonable minds could differ as to whether the phrases “NATO” and “NATO G-10” are generic, the court ruled. Here, the defendants pointed to a number of Internet postings from watchmakers, consumers, and journalists tending to demonstrate that some of the “relevant public” used the term generically. On the other hand, the plaintiff pointed out that searches of many watchmakers’ websites showed that they did not use the phrase “NATO” or “NATO G-10.” In addition, the plaintiff provided the court with a statistical analysis demonstrating that the general purchasing public did not believe that the words “NATO” or “NATO G-10” are generic names for military style watchbands.
To the extent that the defendants claimed that the general public is not part of the “relevant public,” the argument was rejected, the court determined. As set forth in Nartron, in the “appropriate case,” the “relevant public” includes “manufacturers, customers, suppliers, vendors, and the trade and technical press.” To be clear, the court did not limit the “relevant public” to the “general public.” Rather, the court merely noted that the knowledge of the general public—as consumers of watch bands—was relevant to determining genericness in this case. As such, the plaintiff’s survey was one piece of evidence to consider.
Whether a name is generic is a question of fact for the jury. Here, the defendants’ evidence was insufficient to establish genericness as a matter of law, the court held. The plaintiff’s evidence, together with the presumption that exists in favor of nongenericness was sufficient to create an issue of fact.
The case is No. 1:13 CV 1986.
Attorneys: C. Vincent Choken (Choken & Welling) for International Watchman, Inc. Robert M. Ward (Dilworth IP) for The Nato Strap Co., Expo International, Inc., Clockwork Synergy, LLC, ADNweb, LLC, and Worn & Wound.
Companies: International Watchman, Inc.; The Nato Strap Co.; Expo International, Inc.; Clockwork Synergy, LLC; ADNweb, LLC; Worn & Wound
http://www.watchfreeks.com/41-straps-ot ... ssues.html
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