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We are Using a Trademark Name as Part of a Published Book Title > Received Letter

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elgordova

Junior Member
What is the name of your state (only U.S. law)? Washington, D.C.

Hello,

We have an exam prep book published which prepares students for a popular IT certification (for example, the Cisco "CCNA" certification).

In the title of the book ("Cisco CCNA Exam Prep"), as well as throughout the book, we make reference (obviously) to the "CCNA" certification by name. We clearly attribute ownership of the registered mark "CCNA" to the organization who owns the certification; on the book cover and in other areas. And we apply a registration mark when using the term "CCNA".

The organization (UK-based) who owns the CCNA mark claims we are infringing on their mark, and requests we enter into an IP license agreement for any product which includes the term "CCNA" in the title; or cease and desist from selling the product.

Q: Is their claim valid and enforceable?


* "Cisco CCNA" is used as an exampleWhat is the name of your state (only U.S. law)?
 


FlyingRon

Senior Member
Who contacted you? CCNA (at least in the US) is a registered mark of Cisco Technology of San Jose, California. In the US this sort of use is legitimate as long as you don't cause a confusion that this book is somehow published or approved by the mark holder (Cisco). Usually, you just place that disclaimer someplace prominently.

Are you selling the book in the UK? I have no idea what UK trademark law is like and it is entirely outside the scope of this forum.
 

elgordova

Junior Member
Who contacted you? CCNA (at least in the US) is a registered mark of Cisco Technology of San Jose, California. In the US this sort of use is legitimate as long as you don't cause a confusion that this book is somehow published or approved by the mark holder (Cisco). Usually, you just place that disclaimer someplace prominently.

Are you selling the book in the UK? I have no idea what UK trademark law is like and it is entirely outside the scope of this forum.
The actual organization that owns the mark is an enterprise based out of the UK.

* Yes, I am selling the book in the UK (all of Europe), USA, Japan, etc.
* The disclaimer is prominently placed on the back cover and on the copyright page.
 

FlyingRon

Senior Member
The actual organization that owns the mark is an enterprise based out of the UK.
As far as the US is concerned that is not true. CCNA is a registered mark of Cisco Technologies of San Jose, California. The UK company can not enforce any infringement of the mark in the US. They have registration for the mark both as use of the certification itself and training materials for the certification. Cisco themselves could, but they would have a hard time for the reasons I've previously stated.

We can't help with legal issues in other countries than the US.
 

FlyingRon

Senior Member
Well, if he's not going to give us the truth, we can't help either.
Is there a US trademark in play here or not?
 

elgordova

Junior Member
Guys,

"Cisco CCNA" is used as an example. The actual organization and their mark is entirely different, but I am omitting them for obvious reasons.

So "Cisco" is NOT the organization and "CCNA" is not the certification. They are merely used to describe the situation.

The actual organization is a UK-based enterprise, with a certification which is used by IT experts globally.

**************..

And yes, the UK-based enterprise has registered the mark as a trademark in the US.


Feedback is still appreciated on this,

Thanks,
 

FlyingRon

Senior Member
You didn't make that clear in the original (I thought CCNA was just one of the issues you were having, an example rather than a place holder for not telling us what really is going on).

If they have a US mark (or pretty much submitted their mark in accordance with the Madrid protocol), then they are entitled to protections here under US law. But what I told you is still true. As far as the US is concerned, you appear to be OK. However, we can't vouch for what the trademark laws in other countries are. I know the UK has some substantial differences.
 

elgordova

Junior Member
Sorry about the earlier confusion.

And yes, we are already placing prominent disclaimers.

Would they be able to file claims against us or force others to cease selling of our product? For example: could they make a case to Amazon (US) to stop selling our product until something like this is resolved?




You didn't make that clear in the original (I thought CCNA was just one of the issues you were having, an example rather than a place holder for not telling us what really is going on).

If they have a US mark (or pretty much submitted their mark in accordance with the Madrid protocol), then they are entitled to protections here under US law. But what I told you is still true. As far as the US is concerned, you appear to be OK. However, we can't vouch for what the trademark laws in other countries are. I know the UK has some substantial differences.
 

FlyingRon

Senior Member
They can certainly file all the claims they want. You can answer them. Yes, they can allege IP issues at Amazon. Trademark issues aren't as cut and dry as alleging copyright issues, but if they do the latter, I guarantee Amazon will roll over and pull your items so that they retain their safe harbor under the DMCA. Of course, you can file a counternotice alleging that the claims are invalid.

Of course, it's Amazon's game, so they're free to kick you off just because of the controversy. You don't have any statutory relief and since the actor is in another country, pursuing things will be difficult.
 

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