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Green Stuff World Bogus Copyright Claims


Doug Sundseth
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5 minutes ago, kristof65 said:

So this is a dispute between two companies based in Spain, and pretty much only applies in Spain?

 

That's a hard question. By raising the issue on a US platform, GSW has certainly made an attempt to make it apply worldwide. But there are a bunch of treaties that affect international trademark applicability:

 

https://www.wipo.int/trademarks/en/

 

And then there are laws that apply in some areas and not others (in the US, this would include the Constitution, which is the source of trademark authority. The case law for trademarks is very complex, not least because it directly implicates freedoms of speech and the press.)

 

Which is to say, "Too hard, ask a trademark lawyer." ::D:

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Reading through some of those documents I think that there would be grounds to challenge that trademark based on descriptiveness...https://www.wipo.int/export/sites/www/sct/en/meetings/pdf/wipo_strad_inf_5.pdf, point 20 specifically

 

whether vallejo or another company can be bothered on the other hand...

 

Also 'bad faith' (para 53 on) should've cut this out seeing as the term is a common one for this style of paint outside of the hobby arena

Edited by ratsmitglied
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Was doing some various searching myself

 

Color shifting paint was invented and patented as early as 2001 (that patent was trademarked under the name Chromaflair). Pretty sure that predates GSW by long enough that sufficient prior use of the term colorshift could be found.

 

A company known as Louisenthal declares a TM on the term Colourshift:

 

https://www.louisenthal.com/language/en/home/specials/colourshift/

 

Louisenthal makes security strips for currency (among other things).  

 

I find their TM interesting because they simply use the TM mark, and not the ® mark. One would think that an international company making currency products would have their trademark registered with the USPTO.

 

 

My take now is that the term is one of those that only the lawyers are going to benefit from, while various companies will assert it where they think they can get away with it, and other companies will concede simply because they don't want to spend the resources to fight it.

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Doing some further searches, it appears that the Colorshift trademark from GSW is pending (according to the WIPO database), but there are 2 US companies with the trademark registered (one for knife handles, one for lighting) and a Japanese company (cosmetics)

 

Then we also have 'Color Shift' as a registered trademark of Plaid within the same category as the GSW application.

 

So as @kristof65 has said, it's a lawyer's picnic 

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Trademarks are industry specific, so a trademark for a security strip/authentication strip (or knife handles, etc.) might be different enough not to apply to paint. If it were my decision to make, I'd say that there is not a significant chance of market confusion, but who knows what a judge or jury might decide. The fact that similar effects in different forms all use the name "color shift", though, cuts strongly in favor of the descriptive nature of the phrase.

 

As to the decision to use ™ rather than ®: the registration does take time, so some trademarks shift from ™ to ® when the registration goes through. And of course registration does come with a fee as well, so there's that.

 

Here, if the name weren't so descriptive, the similarity would (I think) be enough for market confusion. But I suspect that if the companies were to fight it out (and that would cost a lot of money), the most likely outcome would probably be something where the protectable trademarks would be "GSW Color Shift", "Vallejo Color Shift", and "Plaid Color Shift" or something similar. (And I don't think the choice of spellings of "Color" would be significant to the decision, btw.)

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I think that the only one of the existing trademarks that would have a case to challenge would be the Plaid one (as that is for the same class of material)

 

that said, I think that the similarity is enough for market confusion, and, quite honestly, it is quite possible that vallejo was not aware of the trademark when they first announced their line as they considered it a generic term (and it appears that the line was announced publicly early October, and the trademark wasn't awarded until late October, if I can make head or tail of the Spanish trademark bureau)

 

And this is why trademarks shouldn't be permitted on words, or portmanteaus of words, in common use when they are descriptive of the item

Edited by ratsmitglied
clarification of intent
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If there’s anything I’ve learned about trademark disputes from the Beatles Apple Corp and Apple Computers dispute is that they can take a long time to resolve and often it’s the company that ends up having the deepest pockets who pays off the other for the rights.

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Hey, that's my game store involved in this! I used to work there in the 90s, when it was across the street from its present location and had a different name.  

 

Edit:  In fact, that game store is the entire reason I'm here because they were the first to bring in Reaper Miniatures Dark Heaven when they hit distribution and I bought 02015, the first of many Ed Skeletons.  

Edited by buglips*the*goblin
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Just now, pinkymadigan said:

I love GSW, they have been killing it this past year. Not a good look for them, but looks like an overreaction that they recognize as such, so hopefully they settled down a bit and figure out proper behavior.

 

I would like for it to resolve amicably, since I like both parties and would not want to pick a side.  (If I were compelled to, I think loyalty would put me on the side of the game store because I owe the owner that much).

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1. As previously stated, there are a number of paint and pigment products out there gleefully using the term "color shift" and/or "colorshift." I do not know about any products using the term "chameleon," which, I am told, is another word GSW is attempting to claim for its own. This being said, I'd think GSW has a hell of an uphill battle if it's going to take on a number of other manufacturers to defend "its" trademark.

2. If two companies enter into a battle over a trademark, that's their affair and no real business or interest of mine, except academically. I felt that Games Workshop was being dumb when they tried to defend the term "Space Marine" as being their IP, as a number of authors and firms, including Avalon Hill, were using the phrase years before 40K was ever on paper. That didn't stop me from doing business with the people in question.

3. Now, if I start a YouTube channel reviewing Reaper product (for example,) the Fair Use Doctrine permits me to show brief clips of the product, to talk about the product, to show the product's packaging, demonstrate the product's use, and so on, for review and public discussion purposes. Review, by nature, is opinion. If I start bashing Reaper product, the company might not LIKE it, but they have little recourse; I have a right to my opinion, and to shout it from the rooftops, due to the First Amendment, and the Fair Use Doctrine, as established by legal precedent, within the letter of the law.

4. The woman on YouTube was reviewing Vallejo paints, but GSW objected to the display of these paints and their labels, due to the question of the IP on the labels. They therefore contacted YouTube and demanded the video be yanked.

Originally, I thought GSW was attempting to forestall good reviews of competing product. I was wrong. LEGALLY SPEAKING, GSW's actions were defensible. If you don't defend a trademark, you're in danger of losing your exclusive rights to it, and leaving a legal paper trail is important for demonstrating your defense of the trademark.

My objection HERE is to the steamrollering of the little guy, the YouTuber who unknowingly walked into a buzz saw with no idea that she was doing anything wrong. Legally, she DIDN'T do anything wrong; she obtained the paint legally, and her review was covered under Fair Use. And yet, she gets smacked down.

GSW didn't have to do it that way. They could have contacted the woman, explained the issue, and offered solutions. Instead, they went impersonal and lawyery, to the little guy's detriment. 

And I can't say I approve of an outfit that wants to do business that way. The world is full of businesses that consider one person statistically insignificant. But if they're going to be jerks about it, I will exert what power I can... and vote with my wallet: stick it back in my pants, and shop elsewhere.

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