Cease and desist the sale of company X equipment

[justalayman]

you are asking those here to make call based upon ifo that we do not have. All you are going to get are general and typical answers.

I already said it is not being sold as OE and clearly explained as an upgrade using the two parts. This is clearly not the problem. You keep assuming it but that is wrong.

maybe they take offense to the term "upgrade" we have no way of knowing what their problem is given the info we have.

Did you read the part that I am also reselling a product that is never modified? You really think that can be stopped assuming the advertising is proper?

Now you are claiming it is not modified?

Also, why would I lose if I am selling only the hard drive kit with contains nothing they own?

also in contrast to everything you have posted to date.

Also, how would they take all my money if I just walk through the process and simply wait for the chance to explain my side to the judge without a whole lot of manuvering by an attorney if that is what we chose to do.

because they know how to play the game

What about the recourse I have with them stopping the ads that are not in possible violation?

they have not stopped the ads. They told you to stop. You can continue with the ads. It is up to you.

I still have yet to determine that swapping out a larger hard drive damages the company x name and infringes on their tm somehow - even if I did keep selling thet unit as an upgrade. It is no different then offering a Dell with a swapped out hard drive and reselling it saying it has a larger hard drive.

You are asking specific questions that cannot be answered without specific info.

Try this;

send a response letter to whomever this is and tell them that you do not understand their claim as it is too general. Ask for clarification of their point so you can determine the exact action they are concerned with.

 

[lowenstat]

I should be clearer. Some of the points are more along the lines of what I intend to do and my research has led me to a new path.

Some of the items I was selling were straight retail purchase and resold. They stopped those too. They submit a legal digital document, created by the agency, to the ad agency against a specific ad and it gets stopped. They have done this repeatedly for all of my ads.

Byt the way, I think their email is a boiler plate and it feels like it is addressing signal pirating more then anything else. The only thing that can be pulled from it - if it really was crafted anew, is asking where I obtained the equipment. But again they are not coming out and directly ask me. It really is a mundane sort of letter. Wouldn't an attorney want to craft a good letter directly relating to their problem with my ads? That would be more helpful if they really did have a case or were concerned in taklking care of it. Instead at this point I get the feeling they are trying to just scare me off and abuse their power with the ad agency.

And what I am saying now is that I intend not to sell any of company x product any longer. Just sell thte kits of which consist no parts that company x owns so it comes down to a proper ad using only descriptive names which so far I don't think thety can stop me from using even though they suggest it.

I understand all cases need more info and they can still get messed up but it is kinda clear what I am doing from all my posts by now. I don't need advice on what the outcome will be - who can tell. What I need is what I am getting, information so I can take the dumb factor out.

Yes, I sent them a email asking for specifics and explaining some of the obvious areas they aer overstepping their bounds to show them that they need to look at the ads closer. I do feel they are simply abusing their power with the ad agency but may get in trouble for doing so. This is part of why I may want to take it a step futher.

As stated before, my plan is to only sell service and product that company x does not own. Create proper ads using company x as descriptive name at a minimum. My goal is to see what infringment this would cause. And during this search for my rights in this area I will also see if modifying company x's box is something they have a case with if I were to proceed in the future. Like I also stated, not selling company x's box reduces my business risk (legal risk too), reduces my need for that inventory space, and reduces my time greatly. So its ok with me and since they are complaining I assume to a point they aer right about something. But I still need it proven to me in the long run.

With all these facts so far I would think it could be know if I can resell straight unmodified product, and if I can resell kits and/or services that do not contain company x's items assuming proper advertising of course.

This is what this really breaks down to in my eyes. infringments related to advertising and then infringments relating to reselling the unmodified / modified product and finally performing a service on company x's box for a customer. I am trying to remove the pissing contest and back channel manipulation that I think they are doing here to get to the meat of it.

 

[tranquility]

As far as losing before I start - on what grounds?

I have little interest in your arguments or what you are doing and have no opinion on the merits of your situation. My comment was based merely on how naive you sound when you post that you just want to tell your story to the judge. You will get creamed long before then. They say "infringe", you say "swap out", they say "ok, even if swap out, infringe because case X", you say "umm....". Summary judgment to the plaintiff. You might not even get to the discovery stage as the plaintiff may accept your answer and move for a judgment on the pleadings. (Both those have FCRP cites, but I'm just using common terms.)

Info edit:

send a response letter to whomever this is and tell them that you do not understand their claim as it is too general. Ask for clarification of their point so you can determine the exact action they are concerned with.

NOOOOO!!!! Don't do this! I'm not sure why right now, but my best friend does IP and I remember him saying the response has legal significance. He told a story about this very issue (asking for clarification on a C&D) and the results were disasterous. I hate to write so strongly when I have no idea the reason, but I'm pretty sure this was exactly the point of the horror story. A simple and logical act which screws up the world.

 

[lowenstat]

umm ok. world is now screwed up according to you. i will let you know.

as for being ignorant... isnt that the reason I am here? It was simply a question to ask how ignorant it might be to do that. How it works? What my damages migh be if done.

How would someone know if they didn't ask and not sure what is possible. No reason to condem me yet. The ol fool for a client adage is understood. But the 'client' is smarter for asking the question in the first place before proceeding.

Thank you for asnwering that clearing the second time. That is what I was looking for. I appreaciate that.

Maybe instead of having me say "ummmm..." in the story, I could argue a few points - one of which is the following:

The basic rule is and has long been that ideas of exhaustion and first sale only apply where there has been an authorized unconditional sale of a product or a copy or an unconditional and unrestricted license. As the Federal Circuit commented:

The theory behind this rule is that in [an unconditional sale], the patentee has bargained for, and received, an amount equal to the full value of the goods. This exhaustion doctrine, however, does not apply to an expressly conditional sale or license. In such a transaction, it is more reasonable to infer that the parties negotiated a price that reflects only the value of the 'use' rights conferred by the patentee."

And I say again that I buy company x product retail whith no agreement or contract of any kind.

Or course that is just for sales where I modify company x's box and resell it. Which I no longer do as of C & D for obvious reasons.

No doubt I will have an attorney do this for me if I choose that route, so I understand your point and it is well taken.

 

[divgradcurl]

umm ok. world is now screwed up according to you. i will let you know.

as for being ignorant... isnt that the reason I am here? It was simply a question to ask how ignorant it might be to do that. How it works? What my damages migh be if done.

How would someone know if they didn't ask and not sure what is possible. No reason to condem me yet. The ol fool for a client adage is understood. But the 'client' is smarter for asking the question in the first place before proceeding.

Thank you for asnwering that clearing the second time. That is what I was looking for. I appreaciate that.

Maybe instead of having me say "ummmm..." in the story, I could argue a few points - one of which is the following:

The basic rule is and has long been that ideas of exhaustion and first sale only apply where there has been an authorized unconditional sale of a product or a copy or an unconditional and unrestricted license. As the Federal Circuit commented:

The theory behind this rule is that in [an unconditional sale], the patentee has bargained for, and received, an amount equal to the full value of the goods. This exhaustion doctrine, however, does not apply to an expressly conditional sale or license. In such a transaction, it is more reasonable to infer that the parties negotiated a price that reflects only the value of the 'use' rights conferred by the patentee."

And I say again that I buy company x product retail whith no agreement or contract of any kind.

Or course that is just for sales where I modify company x's box and resell it. Which I no longer do as of C & D for obvious reasons.

No doubt I will have an attorney do this for me if I choose that route, so I understand your point and it is well taken.

Are you being threatened for infringement of a trademark, or a patent? The exhaustion situation is different between the two, don't confuse the two.

 

[divgradcurl]

In IP law, a cease and desist letter is notice. If the person getting such a letter ignores it, if found liable for infringement, that infringement is now willful. This raises the potential of attorney fees and punitive damages.

Not necessarily. You would need to review the notice letter to actually determine whether or not it is sufficient to impart legal notice. Writing a C&D letter is an art -- it's a fine line between providing enough specific information to impart "notice" sufficient to start the damages clock and raise the issue of willful activity, and providing enough of a "reasonable apprehension of suit" to impart declaratory judgment jurisdiction.

 

[lowenstat]

They have not provided a detailed reply yet. And they say is not auth to sell and where are the boxes coming from in a round about way imo. I think its boiler plate message.

According to the previous poster I should have not asked them . I hope he is just kidding hehe.

I can see many of my questions get left in the dust as the thread carries on. Bummer.

Snippet:

After they state they they would like to dicuss the matter furtger at an email address they say...
"Company X takes all threats to the integrity of its business very seriously and intends to pursue vigorously all available legal remedies to protect its rights, including initiating legal proceedings in Federal District Court seeking the award of damages and other available relief when necessary."

Probably standard footer text I assume.

 

[divgradcurl]

As for no one brought a lawsuit -

A declaratory judgment is typically requested when a party is threatened with lawsuit and the threatened lawsuit is not yet filed; or when it is thought by one of two (or more) parties that their rights under law and/or contract might conflict; or as part of a counterclaim to prevent further, similar lawsuits from the same plaintiff (for example, when only a contract claim is filed, but a copyright claim might also be applicable). It may also be sought in administrative law instead of prerogative writs such as certiorari or prohibitions.

So again, is a C&D an email or does it have to be formal letter by mail?

Does it have to just say the words C&D and threaten legal remedies in it?

Along with the other questions I asked above if someone has time.

Thanks

The general guidelines for declaratory judgment jurisdiction is that there is a "reasonable apprehension" of a lawsuit. You might want to read SanDisk v. ST Microelectronics, http://www.fedcirc.us/case-reviews/sandisk-corporation-v.-stmicroelectronics.html -- but that's if you are being threatened with a patent lawsuit. It is not clear currently if this same broader test that SanDisk suggests also applies to trademarks.

You really, really need to either sit down with an attorney, or spend some time in a law library. Start with a book that discusses an entire case. You are not going to sit down with a judge and tell your side of the story -- this is not small claims court.

 

[lowenstat]

Attorney will defintely be involved to at least to help me understand this situation regardless of company x moving forward. I do the same thing each time. Research, post on blogs, consult with attorneys, etc. Thanks for your and everyones attention to my questions.

By them telling me in a C&D I can not use their trademark or brand name do I lose some set of standard rights to sell that I had before? Or it is simply advice from them so they can start documenting the starting point of notification?

If it at all possible in this situation that they are completly wrong but doing a C&D is standard procedure since they can not get in trouble for doing so, can they? Games for whatever reason are played everywhere, lets face it.

Is the person sending me that an attorney or office worker you think? Just standard stuff and scare tactics as usual or they really feel sure about the problem. I ask this because I can not see how they could really see what I sell as a problem given everyone doing it.

Would it be proper and standard to reply to my question as what to what rights I am violating? Or they would rahter just say nothing and wait. What games are played at this point?

Are they really looking for a reply from me? Just want me to slither away? What is the process for the C&D email they sent. Wouldnt they want me to confirm that I stopped, etc, etc. Its like an open process and who knows what they really want based on this silly letter.

Umm, shouldn't C&D letters come, not in email form, but from an attorney in certified mail?

They have to come to my county federal court to sue me?
Would this most likey be for damages in this case or just injunction to stop is normal?
What is the cost categories for either path that I would have to pay?

 

[lowenstat]

Along with the questions above...

When choosing attorneys to review the case would it be better for us to go with one familar with IP law, business law or criminal attorney.

I have seen criminal attorneys that have had cases such as ours with company x.

If the attorneys review the situation and all say they do not see infringment if done this way and review ads before going back to the agency then should I continue? Or should I get permission from company x isntead - even that is even possible. I am guessing they will not give the ok for anythign simply because they do not have to and why should they.

If the previous ads or product set was infringing to some degree then what am I liable for in costs/damages etc assuming I stopped righ twhen they emailed (not legal format?) me a C&D email. What items go into the calcs and what situation would cause me to have to pay for their attorney fees as well?

If the previous ads or product set was infringing to some degree does that mean I can not move forward, correct the problems and start reslling those products properly or the connection is going to get me more trouble?

 

[divgradcurl]

By them telling me in a C&D I can not use their trademark or brand name do I lose some set of standard rights to sell that I had before? Or it is simply advice from them so they can start documenting the starting point of notification?

Depending on the exact language of the C&D letter, if you continue to sell and are later found to be infringing, you could be found liable for willful infringement (meaning, knowing infringement) which will increase the amount of damages AND will make you liable for the other side's attorney's fees.

If it at all possible in this situation that they are completly wrong but doing a C&D is standard procedure since they can not get in trouble for doing so, can they? Games for whatever reason are played everywhere, lets face it.

If they are wrong, then you won't be liable for willful infringement.

Is the person sending me that an attorney or office worker you think? Just standard stuff and scare tactics as usual or they really feel sure about the problem. I ask this because I can not see how they could really see what I sell as a problem given everyone doing it.

Who knows. If the letter is on an attorney's letterhead, or a firm letterhead, then it is from an attorney, so someone working under an attorney.

Would it be proper and standard to reply to my question as what to what rights I am violating? Or they would rahter just say nothing and wait. What games are played at this point?

They are unlikely to get involved in a discussion with you at this point, although anything is possible.

Why do you think they are playing games?

Are they really looking for a reply from me? Just want me to slither away? What is the process for the C&D email they sent. Wouldnt they want me to confirm that I stopped, etc, etc. Its like an open process and who knows what they really want based on this silly letter.

What did the letter say?

Umm, shouldn't C&D letters come, not in email form, but from an attorney in certified mail?

Not necessarily.

They have to come to my county federal court to sue me?

Most likely. Could also be state court, depending on the situation.

Would this most likey be for damages in this case or just injunction to stop is normal?

Both.

What is the cost categories for either path that I would have to pay?

Not sure what you are asking for here.

 

[divgradcurl]

Along with the questions above...

When choosing attorneys to review the case would it be better for us to go with one familar with IP law, business law or criminal attorney.

Whoever you are comfortable with and has experience in this type of suit. But probably not a criminal attorney -- this is a civil matter, not a criminal one.

I have seen criminal attorneys that have had cases such as ours with company x.

Are you sure it was a criminal attorney, and not just an attorney who does both criminal and business law?

If the attorneys review the situation and all say they do not see infringment if done this way and review ads before going back to the agency then should I continue? Or should I get permission from company x isntead - even that is even possible. I am guessing they will not give the ok for anythign simply because they do not have to and why should they.

If you get a written opinion from an attorney that what you are doing is not infringing, and the opinion is a reasonable one, then you will be unlikely to be found willfully infringing. You can still be found to be infringing, but this will usually cure any issues with willfulness.

You are unlikely to get "permission" from company X. Maybe they would offer to sell you a license to continue selling your modified product, but they are not going to simply give you permission.

If the previous ads or product set was infringing to some degree then what am I liable for in costs/damages etc assuming I stopped righ twhen they emailed (not legal format?) me a C&D email. What items go into the calcs and what situation would cause me to have to pay for their attorney fees as well?

It would depend on what damages they can prove. There are a number of theories of damages, and this is really too complicated to go into here. Google trademark damages, or talk with your attorney.

If you lose, you will be liable for fees paid by the other side -- copying expenses, deposition costs, all sorts of different outlays of case. You will not be liable for attorney's fees unless they succeed in proving willful infringement (or if they bring a 17200 case and find you liable under one of the sub-statutes that grant attorney's fees).

If the previous ads or product set was infringing to some degree does that mean I can not move forward, correct the problems and start reslling those products properly or the connection is going to get me more trouble?

If you get an opinion from an attorney that your corrected ad is not infringing, like I said, you may be shielded from a finding of willful infringement. You still could be liable for regular infringement, and attorney's opinion can't shield you from that.

 

[lowenstat]

How does an attorneys opinion letter keep me from willful infringement? Educated guess or something that can be shown in teh court case to show that I meant well?

Are opinion letters costly? How many hours might my situation take given several ads - most alike a C&D email?

I wanted to review with several attorneys before I pick one that I synch up. Once I go with one should both with an opinion letter or pay for them to start working with company x to force a resolution/feedback/response - if that is even possible. And yes they were probably civil or business.

What would a plan of action be to help myself if I want to keep selling without infringement?

This is a severe limitation of chat rooms that I will have to accept. No one probably wants to help with a plan of action and things I can do for myself as well to go forward. Safest bet is to hire attorney which I will do but I am not going to make that attorney become one with me in business (lol) and I need to move forward to help myself.

Does pressuring company x weekly for a response help my case?

What else can I do to help myself move forward outside of the attorney?

Collect ads? Document my steps of removing the ads after C&D. Don't sell companies modified product. Done. Done and Done. What else can you impart on me that would be a good idea to consider?

By the way, I wil be damned (figure of speech not wished outcome lol) if I will stop reselling unmodified products or products not owned by company x but for their products or services to modify their products.

I am still unclear about a service to modify their products. I have not gotten enough debate here to know if that is legal since they own the product and I am not selling it. For example, what happens if the product has a blue void warranty sticker on the bottom of it or is a leased product or they just simply own the patent somehow. How would each of these be a problem? This might not be the current case but it relates to other products in the future I am considering the same resell ad for.

For example, the warranty sticker isn’t on all of same brand of products and only voids a warranty. Is that infringement somehow?

For a lease, then that isn't a infringement is it? The owner has to make it whole when they turn it in. This relates to automobiles. Once turned in then they access the damage or drop in value and charge you or not. Upgrading the GPS system in it as a service or product resold with more memory will not get your charged on that lease. They will not refund money of course for the upgrade however.

Some how someone owns the TM and patent on every electronic item sold - or lets just assume it for this case. What stumps me now that I am into this is what give anyone the right to modify equipment and resell it at all?! Sell it I understand. But modify it and properly advertise and then sell it? I don’t mean to surprise you but now that I have had to look into this I don't see why anyone is given this right - even though its obvious that it exists. Argument for this is what?

 

[divgradcurl]

How does an attorneys opinion letter keep me from willful infringement? Educated guess or something that can be shown in teh court case to show that I meant well?

If an attorney -- presumably one who is familiar and up-to-date on trademark law, and has access to all of the facts of your situation -- applies your facts to the situation in light of current caselaw, and finds that, in his or her opinion, that no infringement exists, then you avoid willful infringement. Without an opinion, if you continue to infringe and are later found liable, the court will say "you should have known to stop, or at least look into the situation more" and will hit you with willful infringement. If you have an opinion of counsel, and are later found liable, the court will say "well, the attorney was wrong, but he was the expert, not you, and you were just following his reasonable advice" and you won't get hit with willful infringement.

Not any opinion will do. An opinion from a DUI lawyer may not meet the requirements. An opinion that does not detail the reasons for an opinion might not be sufficient.

Are opinion letters costly? How many hours might my situation take given several ads - most alike a C&D email?

It depends on the lawyer, but opinion letters can be quite costly. The reason is, this is not just some letter that you throw out there. The attorney is putting themselves on the hook, to some extent -- if they put an opinion of noninfringement out there, and the client still loses, they could get sued for malpractice. So most lawyers take this sort of opinion work quite seriously, and it can be expensive.

I wanted to review with several attorneys before I pick one that I synch up. Once I go with one should both with an opinion letter or pay for them to start working with company x to force a resolution/feedback/response - if that is even possible. And yes they were probably civil or business.

What would a plan of action be to help myself if I want to keep selling without infringement?

Have a lawyer, who is familiar with trademark law and who can review all of the facts of your situation, help you determine a plan of action that minimizes your exposure.

There just isn't any way to give generalized advice here that will be of any help to you.

Does pressuring company x weekly for a response help my case?

Help in what way? What "pressure" can you apply to THEM?

What else can I do to help myself move forward outside of the attorney?

Collect ads? Document my steps of removing the ads after C&D. Don't sell companies modified product. Done. Done and Done. What else can you impart on me that would be a good idea to consider?

By the way, I wil be damned (figure of speech not wished outcome lol) if I will stop reselling unmodified products or products not owned by company x but for their products or services to modify their products.

Okay.

I am still unclear about a service to modify their products. I have not gotten enough debate here to know if that is legal since they own the product and I am not selling it. For example, what happens if the product has a blue void warranty sticker on the bottom of it or is a leased product or they just simply own the patent somehow. How would each of these be a problem? This might not be the current case but it relates to other products in the future I am considering the same resell ad for.

I am not sure what you are asking about here. The issue with selling a service is essentially the same as for selling a product -- how do you properly describe the service without infringing on the trademark. The service certainly appears to raise fewer issues than the sale of the complete system.

For example, the warranty sticker isn’t on all of same brand of products and only voids a warranty. Is that infringement somehow?

What?

For a lease, then that isn't a infringement is it? The owner has to make it whole when they turn it in. This relates to automobiles. Once turned in then they access the damage or drop in value and charge you or not. Upgrading the GPS system in it as a service or product resold with more memory will not get your charged on that lease. They will not refund money of course for the upgrade however.

Where is the trademark infringement here? If you were selling a car with upgrades or modifications and a new Ford or whatever, then maybe that would be infringing.

Some how someone owns the TM and patent on every electronic item sold - or lets just assume it for this case. What stumps me now that I am into this is what give anyone the right to modify equipment and resell it at all?! Sell it I understand. But modify it and properly advertise and then sell it? I don’t mean to surprise you but now that I have had to look into this I don't see why anyone is given this right - even though its obvious that it exists. Argument for this is what?

You can modify and resell equipment all you want -- you may just be limited in how you advertise the product. You can't take a Dell computer, add or replace parts, and then sell it as a new Dell computer (well, maybe Dell wouldn't care, but you get the point, I hope). You could certainly sell an upgraded computer -- maybe you just can't use the term "Dell" in the advertising.

BTW, you see stuff like this all of the time, where advertisements include terms like "made using major name brand components" -- to avoid the situation you are in now.

 

[lowenstat]

Quote:
For example, the warranty sticker isn’t on all of same brand of products and only voids a warranty. Is that infringement somehow?

What?

Sorry I was not clear. I am trying to find out if products carry a manufacture warranty or are on a lease if that causes me additional potential legal problems when reselling for infringement or some other areas?

Quote:
For a lease, then that isn't a infringement is it? The owner has to make it whole when they turn it in. This relates to automobiles. Once turned in then they access the damage or drop in value and charge you or not. Upgrading the GPS system in it as a service or product resold with more memory will not get your charged on that lease. They will not refund money of course for the upgrade however.

Where is the trademark infringement here? If you were selling a car with upgrades or modifications and a new Ford or whatever, then maybe that would be infringing.

Not sure I understand if you can reply again I would appreciate it. I am saying a leased product is something that seems to be owned by a company. Once activated it has to be returned to that company (strange that no contract was signed so how this can be enforced is beyond me). It would seem to me that maybe this is the trickiest item to resell because of this term "leased". The way I think about it is that the company actually owns it, not me or the person I sell it to and that I have less rights about modifying it and reselling it. However, maybe I am wrong and as long as it is advertised as a leased item then its up to the buyer to be aware that it could cause them problems when they turn it in.

Basically I am taking everything discussed up to this point and adding a further level of complexity to it which will take me to the next level of understanding. As separate cases adding a (1) warranty sticker, (2) a lease and (3) a total and complete TM, patent, copyright and whatever else rights onto a item and see what responses I get will help me understand more about infringement issues. It seems tome that it adds anotehr level or problems to the mix. It might just be that those have to be documented in the ad (if that is true - and if so maybe company x cant sue but customer x can ?) which brings us back to its all about advertising.