Trademark for bottle Caps

[Jamesluke32]

Since single317dad and quincy have decided to attack me and my intentions based on the limited knowledge of the situation. Let me clarify for them, I have no intent to actually PROFIT from their IP and haven't actually been PROFITING(I sell them at cost plus shipping). I came here for advice so as to find a legal avenue to produce a product that I want to personally own. I happen to be a fan of this particular game, and the company that produces it does not make these sorts of products and as far as I am aware does not intend to although if they do that's great and it actually solves my problem.

Here is the situation I find myself in:
I can't manufacture everything myself, which means that If I want a cool looking lunchbox like the one in the game I have to have one made. Having an item like this made usually requires a minimum order size. So if I need to order 1000 lunchboxes in order to own one, I would like to be able to get rid of the rest at cost to keep me from spending a fortune. If the IP isn't being used and I can acquire the rights to produce it legally then I would like to do so. A similar situation exists in clubs like the 501st Legion (People who dress up like storm troopers) or people who assemble full sized R2D2 droids. The cost to produce some of the parts is astronomical for single items and even for some low volume runs. So they buy large orders and sell the parts to other people in the group who want them at cost. Lucasfilm and now Disney allows these groups to exist and so they do, but at any moment they could change their minds(I doubt so because it would be spitting in the face of their fan base and I think there would be a lot of backlash). I don't want the trademark so that I can profit from it or to stop other people from making their own props, or even to stop Bethesda from making them. I just want to have a legal way to obtain these items and in the process allow others who want them to be able to obtain them.

 

[quincy]

Since single317dad and quincy have decided to attack me and my intentions based on the limited knowledge of the situation. Let me clarify for them, I have no intent to actually PROFIT from their IP and haven't actually been PROFITING(I sell them at cost plus shipping). I came here for advice so as to find a legal avenue to produce a product that I want to personally own. I happen to be a fan of this particular game, and the company that produces it does not make these sorts of products and as far as I am aware does not intend to although if they do that's great and it actually solves my problem.

First, I appreciate the clarification.

Second, my previous post was a general comment. There are many people who take another's rights-protected material (like copyrighted photos) and use them for their own personal profit (by printing the photos on tee-shirts). This often works well for the infringer until the infringer is sued.

If you were aware that Nuka Cola was a registered trademark, you were intentionally using a registered trademark as a way to sell your bottle caps, perhaps because you were unfamiliar with trademark law. Many people are. But the fact is that bottle caps without the Nuka Cola trademark probably would not have sold, or at least sold as well. So you were capitalizing on the trademark owned by ZeniMax Media, whether you made a profit from the sales or not.

Here is the situation I find myself in:
I can't manufacture everything myself, which means that If I want a cool looking lunchbox like the one in the game I have to have one made. Having an item like this made usually requires a minimum order size. So if I need to order 1000 lunchboxes in order to own one, I would like to be able to get rid of the rest at cost to keep me from spending a fortune. If the IP isn't being used and I can acquire the rights to produce it legally then I would like to do so.

When you want to use someone else's rights-protected material, you contact the rights holder. Sometimes they will provide a license to use their material and sometimes they won't. With famous trademarks, the cost of a license often prices the ordinary person out of the market. That is the tough reality. But you cannot use what does not belong to you and the Nuka Cola trademark does not belong to you.

A similar situation exists in clubs like the 501st Legion (People who dress up like storm troopers) or people who assemble full sized R2D2 droids. The cost to produce some of the parts is astronomical for single items and even for some low volume runs. So they buy large orders and sell the parts to other people in the group who want them at cost. Lucasfilm and now Disney allows these groups to exist and so they do, but at any moment they could change their minds(I doubt so because it would be spitting in the face of their fan base and I think there would be a lot of backlash). I don't want the trademark so that I can profit from it or to stop other people from making their own props, or even to stop Bethesda from making them. I just want to have a legal way to obtain these items and in the process allow others who want them to be able to obtain them.

Actually, George Lucas has sued over storm trooper replica costumes. He was successful with a suit in the US; he was not successful with his suit in the UK.

Many people try to sell items that capitalize off the rights-protected material of others and, while they can be successful with sales for awhile, generally they are discovered by the holder of the rights. When they are discovered, generally the rights-holder will send a cease and desist letter.

The cease and desist letter can simply tell the infringer to stop their infringement and, if the infringer stops, the rights holder will be satisfied with that. Some cease and desist letters, however, can come with a demand for compensation. The infringer can pay what is demanded, negotiate for a lower amount to settle with the rights holder, or refuse to settle and wait to be sued.

With copyrighted material that appears online, a DMCA takedown notice sent to the webhost is often the first action a copyright holder will take and the infringing material will be removed from its place online. When goods are sold online that use another's trademark, the trademark holder will often first contact the hosting site to have the goods pulled.

Whatever happens is up to the rights holder. The rights-holder can do nothing or the rights-holder can seek to take legal action against the infringer up to and including a lawsuit.

The only legally safe way to use another's trademark or another's copyrighted work without any risk of a lawsuit is to get permission from the rights-holder.

Again, you can go over your situation with an IP attorney in your area. The cost of an attorney can be high, but the cost of a lawsuit should one be filed against you stands to be far higher.

Good luck.

 

[Jamesluke32]

I have thanked people for their replies twice now, and constructive responses are always welcome and appreciated. Insinuating that my inquiries are made in an attempt to steal someone else IP to profit
from them because I am not creative enough to come up with unique ideas of my own is unnecessarily provocative and not constructively adding to the conversation. Especially since seeking basic legal council generally implies ones attempt to stay on the right side of the law and there was always the possibility that I could have legal right to use this IP and then I wouldn't be stealing. My line of inquiry is about who the rights holder is and the exact circumstances that establish that right.

Perhaps my understanding of trademark law is limited hence why I am here, but I was under the impression that a trademark existed in a specific category and thus only protected specific products or services that fell within the scope of that class. Thus a trademark for a video game would not necessarily cover a tv show, or a t shirt, otherwise why bother having classes at all. Up until 3 weeks ago there was not even an application to register the trademark for NUKA COLA in the class of merchandise I am talking about. My hope was that the lack of a trademark registration in that class, until recently, would allow me to legally produce these items and so I came here to ask if that may be the case. It seems to be the consensus that I would likely be unable to legally continue to do so because the trademark is strong and thus may automatically span multiple classes automatically. My follow up question to this is why would they bother to register a second trademark for NUKA COLA in this class if the previous trademark was sufficient?

I am familiar with the the George Lucas lawsuit's you are referencing, it was based on the for profit sale of storm trooper costumes pulled from the original mold, by the original mold maker, who because of the classification in the UK of the armor as a functional piece of clothing and not art, limited the copyright to something like 15 years there, but not in the U.S. The 501st does not sell items for profit and neither do the R2 Builders, but they also do not have a license to produce and sell at cost to each other. They exist because they are allowed to exist in that space by the owner of the copyright/trademark which see their existence as a positive influence to their brand. I use them as an example to illustrate a situation in which activities similar to mine are tolerated as long as they remain not for profit. I understand that the rights holder is ultimately responsible for making that decision, hence why I would be interested in any legal rights I might have to establish control of the trademark for my limited purpose or for the purpose of legal leverage to negotiate the right to continue my limited use. Interestingly enough two of the R2 builders groups members were hired to work on the newest Star Wars film as part of the team constructing the R2D2s.

Thank you for listing the likely steps a company would take if they thought I was violating their IP.

 

[quincy]

I have thanked people for their replies twice now, and constructive responses are always welcome and appreciated. Insinuating that my inquiries are made in an attempt to steal someone else IP to profit
from them because I am not creative enough to come up with unique ideas of my own is unnecessarily provocative and not constructively adding to the conversation. Especially since seeking basic legal council generally implies ones attempt to stay on the right side of the law and there was always the possibility that I could have legal right to use this IP and then I wouldn't be stealing. My line of inquiry is about who the rights holder is and the exact circumstances that establish that right.

You are smart to inquire about the legalities involved in using a trademark belonging to another on your own product. It might have been a better idea, however, for you to have inquired about the legalities prior to selling your bottle caps with the Nuka Cola trademark. But I understand that there are a lot of laws, and trademark and copyright laws are among the most confusing. That is why so many people infringe. A lot of people who infringe are not aware there is even anything like infringement to worry about.

And there are times when you can legally use another's trademark or copyrighted work and profit from it. For example, had you told me you were selling Coca-Cola bottle caps, with the bottle caps collected after you or others had purchased bottles of Coke, you would be on safe legal ground. You are allowed to resell what you purchase (making a product from the Coca-Cola bottle caps, on the other hand, can create legal issues and can require a license from Coke).

Perhaps my understanding of trademark law is limited hence why I am here, but I was under the impression that a trademark existed in a specific category and thus only protected specific products or services that fell within the scope of that class. Thus a trademark for a video game would not necessarily cover a tv show, or a t shirt, otherwise why bother having classes at all. Up until 3 weeks ago there was not even an application to register the trademark for NUKA COLA in the class of merchandise I am talking about. My hope was that the lack of a trademark registration in that class, until recently, would allow me to legally produce these items and so I came here to ask if that may be the case. It seems to be the consensus that I would likely be unable to legally continue to do so because the trademark is strong and thus may automatically span multiple classes automatically. My follow up question to this is why would they bother to register a second trademark for NUKA COLA in this class if the previous trademark was sufficient?

Your understanding of trademark law is not entirely off-base when it comes to trademark classes. You can often have the same trademark used in commerce by two different companies if the goods or services being marketed are different. That is why you can have Dove soap peacefully co-existing with Dove ice cream bars. The Dove trademark name is the same but the product and the market for the product is different (and they have different logos, which further distinguishes one company from another) and so consumers are not confused as to the origin of the product or service.

Trademark law centers on consumer confusion. The more likely a consumer is to be confused as to who owns the product due to the same or similar marks, the more likely a lawsuit will result.

But you have additional problems using the same or a similar name to that of a famous company. The famous mark is so recognizable by consumers that any other company using that name can confuse consumers into thinking there is a connection to the famous company. That is why the name Disney cannot be used by others or the name Microsoft or the name Kodak - regardless of what product or service is being offered.

And, although I am unsure how famous the Nuka Cola mark is, I trust FlyingRon when he states that he thinks it could be judged famous. If that is the case, anything you wanted to market using that name could result in a lawsuit.

I am familiar with the the George Lucas lawsuit's you are referencing, it was based on the for profit sale of storm trooper costumes pulled from the original mold, by the original mold maker, who because of the classification in the UK of the armor as a functional piece of clothing and not art, limited the copyright to something like 15 years there, but not in the U.S. The 501st does not sell items for profit and neither do the R2 Builders, but they also do not have a license to produce and sell at cost to each other. They exist because they are allowed to exist in that space by the owner of the copyright/trademark which see their existence as a positive influence to their brand. I use them as an example to illustrate a situation in which activities similar to mine are tolerated as long as they remain not for profit. I understand that the rights holder is ultimately responsible for making that decision, hence why I would be interested in any legal rights I might have to establish control of the trademark for my limited purpose or for the purpose of legal leverage to negotiate the right to continue my limited use. Interestingly enough two of the R2 builders groups members were hired to work on the newest Star Wars film as part of the team constructing the R2D2s.

The profits made by an infringer is only one factor looked at, although it can be an important factor. Both FlyingRon and I mentioned "dilution" and there can be an award of damages if a trademark's reputation is harmed or the value diminished by an infringer's unauthorized use.

Thank you for listing the likely steps a company would take if they thought I was violating their IP.

You're welcome, Jamesluke32. I still recommend you consult with an attorney in your area who can look at the real life examples and advise you better than any of us can do in a forum setting. Good luck.

 

[single317dad]

Let me clarify for them, I have no intent to actually PROFIT from their IP and haven't actually been PROFITING(I sell them at cost plus shipping). [...] So if I need to order 1000 lunchboxes in order to own one, I would like to be able to get rid of the rest at cost to keep me from spending a fortune.

You're mitigating your expenses on the back of someone else's creative property, which is very, very close in definition to profiting. That aside, profit is not a required element of infringement.

The bottom line, which I will state quite less eloquently than quincy has, is that what you are already doing -- and what you suggest doing going forward -- is both legally and morally wrong without permission from the rights holder.