Trademark infringement for animal (fish) name question

[MiguelT]

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

I'm currently doing research on an article I'm writing that I'm simply fascinated by and had a trademark question. There was a fish breeder who trademarked a name for their fish, for the sake of having a name as an example let's say "Sparkly," which is the name they chose to give to fish resulting from a cross between FishA x FishB. A new company recently bought the fish and trademarks and is sending "cease and desist" letters to breeders who are selling hybrids of the fish, claiming that they are infringing on the trademark simply by disclosing the lineage of the fish as a hybrid between "Sparkly" x RegularFish.

These breeders aren't selling the fish as "Sparkly," just stating the parents of the offspring and either using a new name (ie "Awesomes") or simply calling them "Sparkly" x RegularFish. The company's attorney sent cease and desist letters asserting that using the lineage in any way to sell these fish is a trademark infringement, even though they are not being sold specifically as "Sparkly" but "a hybrid of 'Sparkly' and Regularfish." Interestingly, they have also sent cease and desist letters to people who simply have videos of a "Sparkly" fish swimming with a RegularFish on youtube, claiming that even citing lineage is an infringement.

Do they have any legal standing to be making these claims, or is it simply a new company being a bit overzealous in trying to protect their trademark and bully people out of using it? Either way I thank you very much for your time in reading this far.

 

[quincy]

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

I'm currently doing research on an article I'm writing that I'm simply fascinated by and had a trademark question. There was a fish breeder who trademarked a name for their fish, for the sake of having a name as an example let's say "Sparkly," which is the name they chose to give to fish resulting from a cross between FishA x FishB. A new company recently bought the fish and trademarks and is sending "cease and desist" letters to breeders who are selling hybrids of the fish, claiming that they are infringing on the trademark simply by disclosing the lineage of the fish as a hybrid between "Sparkly" x RegularFish.

These breeders aren't selling the fish as "Sparkly," just stating the parents of the offspring and either using a new name (ie "Awesomes") or simply calling them "Sparkly" x RegularFish. The company's attorney sent cease and desist letters asserting that using the lineage in any way to sell these fish is a trademark infringement, even though they are not being sold specifically as "Sparkly" but "a hybrid of 'Sparkly' and Regularfish." Interestingly, they have also sent cease and desist letters to people who simply have videos of a "Sparkly" fish swimming with a RegularFish on youtube, claiming that even citing lineage is an infringement.

Do they have any legal standing to be making these claims, or is it simply a new company being a bit overzealous in trying to protect their trademark and bully people out of using it? Either way I thank you very much for your time in reading this far.

If, for example, Disney's trademarked fish name "Nemo" is used instead of clown fish to advertise or promote a fish product, it could be an infringement of Disney's trademark. If consumers were confused into believing Disney was connected in any way with the product (sponsors it, endorses it, created it), or if the use of Nemo disparages the trademark or dilutes its value, then I could see Disney sending out cease and desist letters and threatening to sue.

Disney is a company that is not at all shy about protecting their rights, even when they might not have them.

So, if the Sparkly trademark is anything like the Nemo trademark, cease and desist letters sent to unauthorized users of the mark could be expected. Whether any suit were to come from continued use of the mark after the receipt of a cease and desist is anyone's guess. It depends on all sorts of facts and factors, with a major factor being the litigiousness of the trademark holder.

It is important to note that a trademark holder must enforce his own rights in a mark or else risk losing all rights to the mark. That is why some trademark holders may seem a little overzealous in their policing of the market and sending out notices to those found using the mark without authorization, even when the use may be a legal one.

One legal use of a trademark is when the trademark is used in a descriptive way. For example, I cannot describe the type of soft drink I am having unless I am able to use the trademarked name Coke or Pepsi, and I cannot talk about driving a Mazda unless I am able to use the trademarked name Mazda. These are considered fair uses.

Although it appears that most of the "Sparkly" examples you gave fall into this legal descriptive territory, this would not prevent a trademark holder from challenging the uses and sending out cease and desist letters, threatening to sue.

Whenever there is a question as to whether a use of any rights-protected material is a legal use or not, a fair use or not, it is often necessary to have the specifics personally reviewed by an IP attorney.

 

[MiguelT]

So, if the Sparkly trademark is anything like the Nemo trademark, cease and desist letters sent to unauthorized users of the mark could be expected. Whether any suit were to come from continued use of the mark after the receipt of a cease and desist is anyone's guess. It depends on all sorts of facts and factors, with a major factor being the litigiousness of the trademark holder.

It's not similar to the Nemo trademark since I imagine that one is due to the specific Nemo. This is more like the "Ragdoll" trademarked cat name where it was more of a breeder description for all of the non-specific babies coming from a specific pair of cats.

One legal use of a trademark is when the trademark is used in a descriptive way. For example, I cannot describe the type of soft drink I am having unless I am able to use the trademarked name Coke or Pepsi, and I cannot talk about driving a Mazda unless I am able to use the trademarked name Mazda. These are considered fair uses.

Although it appears that most of the "Sparkly" examples you gave fall into this legal descriptive territory, this would not prevent a trademark holder from challenging the uses and sending out cease and desist letters, threatening to sue.

I think the descriptive way is more like how it is being used, the breeders are basically unable to describe their fish without saying they are a cross between "Sparkly" and some other fish. I imagine it falls under fair use, but the trademark holder is definitely getting a little overzealous with it which make it such an interesting story for me. Thanks very much for your reply, much appreciated!

 

[quincy]

It's not similar to the Nemo trademark since I imagine that one is due to the specific Nemo. This is more like the "Ragdoll" trademarked cat name where it was more of a breeder description for all of the non-specific babies coming from a specific pair of cats.



I think the descriptive way is more like how it is being used, the breeders are basically unable to describe their fish without saying they are a cross between "Sparkly" and some other fish. I imagine it falls under fair use, but the trademark holder is definitely getting a little overzealous with it which make it such an interesting story for me. Thanks very much for your reply, much appreciated!

Yes, some trademark holders go a little bit overboard when it comes to protecting their rights in a trademark. But it is sort of understandable when you consider what they have to lose if they are not vigilant.

Thank you for the thanks.