Trademark for bottle Caps

[Jamesluke32]

What is the name of your state (only U.S. law)? California

I have been selling bottle caps with the words NUKA COLA, a parody of Coca Cola. While NUKA COLA had been trademarked for use in Videogames, as well as apparel no other trademarks were registered. Recently Zenimax Media filed an application to trademark NUKA COLA for use on bottle caps and other merchandise. As far as I am aware, Zenimax has never attempted to use NUKA COLA on bottle caps in commerce before this.

Because I sold bottle caps with the name NUKA COLA prior to the trademark filing for NUKA COLA on bottle caps, can I oppose the trademark and can I trademark it for my own use?

 

[quincy]

What is the name of your state (only U.S. law)? California

I have been selling bottle caps with the words NUKA COLA, a parody of Coca Cola. While NUKA COLA had been trademarked for use in Videogames, as well as apparel no other trademarks were registered. Recently Zenimax Media filed an application to trademark NUKA COLA for use on bottle caps and other merchandise. As far as I am aware, Zenimax has never attempted to use NUKA COLA on bottle caps in commerce before this.

Because I sold bottle caps with the name NUKA COLA prior to the trademark filing for NUKA COLA on bottle caps, can I oppose the trademark and can I trademark it for my own use?

Anyone who might be harmed by the registration of a trademark can oppose the registration of mark.

I do not see that you were first to use the name in commerce to identify a product connected to a soft drink, though, so your chances of a successful opposition might be slight.

You can review the specifics with a trademark attorney in your area of California for a better idea of where you stand legally with your use of the name and any challenge you might want to make to another's use of the same name.

 

[adjusterjack]

Because I sold bottle caps with the name NUKA COLA prior to the trademark filing for NUKA COLA on bottle caps, can I oppose the trademark and can I trademark it for my own use?

Yes, I think you may have a superior right to the trademark based on usage but you obviously have no clue as to enforcing that right.

Study up on trademark at the USPTO website:

http://www.uspto.gov/trademark

Then hire yourself a trademark attorney because, without one, that company with ITS attorneys will steamroll you.

 

[quincy]

Yes, I think you may have a superior right to the trademark based on usage but you obviously have no clue as to enforcing that right.

Study up on trademark at the USPTO website:

http://www.uspto.gov/trademark

Then hire yourself a trademark attorney because, without one, that company with ITS attorneys will steamroll you.

No, adjusterjack, he probably doesn't have a superior right to the trademark. The trademark has already been registered and another application has already been filed.

I agree that a trademark attorney can determine where he stands legally with his use on his bottle caps. He may find that he is the one infringing on another's rights.

 

[Jamesluke32]

Thank you for the responses. The USPTO website is a little daunting and so while researching it I wanted at least some confirmation that my reasoning with respect to trademark law was correct before I did anything else.

Yes I am aware that I am not the first person to use NUKA COLA on actual bottle caps. I included the information not because my use of the mark has superiority over all others, but that perhaps under common law it has superiority over Zenimax who has neither previously registered the mark for bottle caps, nor used the mark on bottle caps. To clarify the application for their trademark was filed on 8/10/15 and has not been approved.

 

[quincy]

Thank you for the responses. The USPTO website is a little daunting and so while researching it I wanted at least some confirmation that my reasoning with respect to trademark law was correct before I did anything else.

Yes I am aware that I am not the first person to use NUKA COLA on actual bottle caps. I included the information not because my use of the mark has superiority over all others, but that perhaps under common law it has superiority over Zenimax who has neither previously registered the mark for bottle caps, nor used the mark on bottle caps. To clarify the application for their trademark was filed on 8/10/15 and has not been approved.

I agree that the USPTO website can be a bit overwhelming.

You were not the originator of the Nuka Cola name so you will have a hard time asserting any trademark rights in the name. There are already five "live" registrations on the name - an application was filed by ZeniMax Media on August 5 that covers bottle caps, and ZeniMax Media registered the trademark Nuka Cola in 2012 and 2014.

It could be possible that you will be allowed to continue your use of the name in a limited fashion - but you may have to cease all sales and, worst case scenario, you could be sued for dilution or infringement. It all depends.

You should personally review all facts with a trademark attorney in your area to determine this better.

 

[adjusterjack]

Yes I am aware that I am not the first person to use NUKA COLA on actual bottle caps.

You didn't write THAT in your post.

I withdraw my comment.

I think you are the one infringing.

 

[quincy]

You didn't write THAT in your post.

I withdraw my comment.

I think you are the one infringing.

Jamesluke32 said in his original post that he had been selling bottle caps with the words Nuka Cola. He also said the name Nuka Cola had previously been registered by someone else.

Registered marks are often provided greater protection than unregistered marks. The name "Nuka" is an invented word and it has also gained a secondary meaning in the marketplace. Both elements make it a strong mark. Strong marks are provided the greatest protection under trademark law. The registered owner of an inventive mark like "Nuka" can (generally) prevent all others from using the mark on their own products or services.

In other words, Jamesluke32 provided in his first post the facts necessary to say he probably did not have "superior" rights.

That said, he still will want to have all facts reviewed personally by a trademark attorney in his area to better determine if he can claim any rights at all. I think it doubtful.

 

[FlyingRon]

Not only is NukaCola a strong mark of the game manufacturer, it can be argued that it is a FAMOUS mark and it's even non-confusing use is dilution.

 

[quincy]

Not only is NukaCola a strong mark of the game manufacturer, it can be argued that it is a FAMOUS mark and it's even non-confusing use is dilution.

Right, although a claim of dilution might be unlikely.

I think Jamesluke32 will probably receive a cease and desist letter from ZeniMax Media. In fact, I am sort of surprised he hasn't already.

It might be possible for Jamesluke32 to work out a licensing agreement of some sort with ZeniMax and a licensing agreement might be the best he can hope for if he wishes to continue with his bottle cap sales.

Unless there are facts of his use of the Nuka Cola name that we are unaware of. That is always a possibility - which is why a personal review by an attorney in his area would be smart.

 

[FlyingRon]

Right, although a claim of dilution might be unlikely.

I don't know why you would say that.

I think Jamesluke32 will probably receive a cease and desist letter from ZeniMax Media.

Which would almost certainly argue both direct infringement and dilution.

In fact, I am sort of surprised he hasn't already.

Agreed.

Further, to get back to the original question, he's about a year out of date for filing an opposition to registration.

 

[Jamesluke32]

Again thanks for the info. It is very informative.

How about a mark like VAULT-TEC. It was registered once in 2008-11-20, for Computer game programs and software. Is it less strong because it is just a combination of regular words Vault and tech? And if ZeniMax has only trademarked it for use in "Computer game programs and software" can I use it in stationary or other merchandise or does the protection extend to any and all usage?

 

[quincy]

Again thanks for the info. It is very informative.

How about a mark like VAULT-TEC. It was registered once in 2008-11-20, for Computer game programs and software. Is it less strong because it is just a combination of regular words Vault and tech? And if ZeniMax has only trademarked it for use in "Computer game programs and software" can I use it in stationary or other merchandise or does the protection extend to any and all usage?

You would be smart to avoid using any trademarks already in existence on any of your products or services. Pick a name that no one is using already in commerce and no one has registered. Invent your own name. That is the best way to avoid any trademark issues.

This is not always legally necessary. There are names used as trademarks that are shared by more than one company. But using a name already in use can be a risky and ultimately costly way to start a new business.

VAULT-TEC is not unlike Microsoft, two words combined to form a single distinctive word. Combining two disparate words to form one word is one way to create a strong trademark.

The holder of a strong trademark can potentially prevent ALL other uses of the trademark without their authorization.

Again, seek out the help of a trademark attorney in your area if you have questions about your use of the Nuka Cola mark on your bottle caps. I can see a possibility or two where your use of the name might escape legal action - but this requires research best done by an attorney in your area who can see your bottle caps and review the use in the last few years of the Nuka Cola mark on these, on ZeniMax Media products, and on any other products that may be out there created by others.

And, FlyingRon, I mentioned the possibility of dilution in an earlier post and I mentioned that it appears Nuka Cola has gained a secondary meaning in the marketplace. I think it is possible for a trademark infringement claim and a dilution claim. There could be a good chance that an injunction will issue.

But until this thread, I was unfamiliar with both ZeniMax Media and Nuka Cola. I don't play those games.

 

[single317dad]

I think Jamesluke32 will probably receive a cease and desist letter from ZeniMax Media. In fact, I am sort of surprised he hasn't already.

So am I. The only reasons I can think of that he hasn't already gotten a C&D are that Zenimax/Bethesda either haven't sifted through the large number of infringers yet or that they haven't discovered valid contact information for Jamesluke32 yet. It's clear that Jamesluke32 intends to use others' property to profit for himself, is doing so already, and seeks another avenue to continue to do so.

 

[quincy]

So am I. The only reasons I can think of that he hasn't already gotten a C&D are that Zenimax/Bethesda either haven't sifted through the large number of infringers yet or that they haven't discovered valid contact information for Jamesluke32 yet. It's clear that Jamesluke32 intends to use others' property to profit for himself, is doing so already, and seeks another avenue to continue to do so.

Yup. It is not uncommon for people to try to capitalize off the rights-protected material of others - usually when they can't come up with unique ideas of their own. And it can often be profitable for them for awhile - until they are sued and must turn over all of their profits (plus extra dollars) to the rights-holder.