" If you are using the trademark is a "purely descriptive" sense, then that is a fair use of the trademark, and is okay. "
Can you describe 'purely descriptive' as it relates to a title listing, text in the ad or a picture in the ad? Does this mean that can not stop you from using it as such no matter what - or they can always make something up?
If you are selling an IBM PC, you can call it an IBM PC in your advertising,because it IS an IBM PC. You cannot say something is "like" an IBM PC, you can't use "IBM PC" in your title when you are selling something other than an IBM PC. Whether or not you can use "IBM PC" to sell a part that is compatible, well, that my require a more detailed look at the way the term is being used.
The reply so far from the company X is that I am not an authorized dealer and some other cut and past fluff including cease and desist, etc. They dont even mention modifications.
I have several types of items I am selling.
1 - Units bought, modified and resold.
2 - Kits, which do not include the units, for others to modify the units that the customer owns. Parts in the kits are not owned/created by company x. But the kis it for company X's product so I have to describe the ad like that.
3 - A service in which customer sends me the units and parts and we modify it for them. I have to use company X's name to describe what the service is for.
In cases 2 and 3 I do not yet see how I am infringing. In case 1 you are saying if they say its bad for the product somehow then its a problem for them.
Do they have a patent?
As for 2 and 3, you really need someone to take a look at exactly how you are marketing these kits and services. For example, saying you have a kit that works on an IBM PC is different from titling the kit "IBM PC Upgrade Kit" and splashing the IBM logo all over the ad. There just really isn't any "bright line" rule that says this is okay and that isn't -- you need to look at all of the facts of the situation to really come up with an accurate assessment of the possibility of liability.
I did not know I have rights to sell anything I want as a straight resell without permission. They are acting like I must be an authorized vendor.
That's not exactly correct -- maybe I should have been more clear in my previous post. From a trademark perspective, the "first sale" generally must be a retail sale. If you are purchasing these devices wholesale, oftentimes you must be an authorized vendor to obtain the devices at wholesale prices, and thereby agree to certain restrictions. If you obtained these devices outside of normal retail channels, the trademark holder MAY be able to assert some rights -- again, this would require an assessment of all of the facts of your current situation, which is why I suggested an attorney.
I'm concerned about fairnesss if they are allowed to target anyone without some diligence of stopping others. I would have to think it should come into play somehow, however small.
How do you know the others haven't been targeted? Maybe they've already come to some sort of agreement. Maybe you are the first, and they will go after the others later?
Look at this from another perspective -- do you feel that it is unfair when someone else gets stopped for speeding when you don't?
The advertising company I use has a policy of stopping ads right at the moment of complaint - almost push button. Company X however must submitt a form that the advertising company considers legal complaint signed digitally under penalty of pergury. Well, if I push the issues then the ad agency says they will force company X to get a court order to stop me.
If that happens will I be involved in being able to speak to the judge to present my side?
Yes and maybe. The trademark holder will need to file a lawsuit before anything happens, and you will be able (actually required) to either answer the complaint, or file a motion to dismiss. Assuming you answer (or the motion to dismiss is denied), the trademark holder could potentially file for a temporary restraining order -- which is done WITHOUT your input -- but shortly thereafter the TRO would need to be converted to a preliminary injunction, in which case you would get to oppose any preliminary injunction. After that, it's pretty much just like any other court case.
Either the TRO -- if granted, or the preliminary injunction -- if granted, is the "court order" that is what your agency is talking about.
Do they have to prove anything or just show that I am selling their product?
Of course they have to prove stuff. Preliminary injunctions are a 4-factor test, you can look it up on google or whatever, TRO's also have an "immediacy" requirement in addition to the test for an injunction.
Can it be a blanket court order or is it for each ad they want to stop?
Depends on the circumstance. The court can issue a "blanket order" depending on the facts and the evidence in support of the order.
Do I have any recourse for the ads they stopped and will stop for which I am only selling a service of modifications to their units or the ads that sell the parts not owned by company X but its for company X's product?
You could certainly ask for such relief in your answer to the complaint.
Should I push them to get a court order to make them show their side/case/facts or once they get that I'm dead in the water and it was a bad move?
Do you want to go to court over this? You really need to sit down with an attorney, who can figure out what exposure you might have, and then you can decide how to proceed.
You mentioned selling their product after the mods but stripping off their brand name. Does that mean not using their name at all? Its a cable tv box so customers wouldnt even know what service to subscribe to and when they received it they would see the name brand, packaings and directions all with the name of company x. Is there a way around this such as using the model number but not the company name? If you could provide an idea I can keep looking into it further.
That is an issue. The problem here is that if I sell you an IBM PC that I have mucked around with, and the PC doesn't work like you expect, and you call IBM for service and they say "no" because the PC has been altered, and you get pissed off at IBM -- well, that's what the trademark holder is
entitled to avoid under trademark law.
The fact that this makes your job hard is really irrelevant. You don't have a
right to sell modified cable boxes (are you sure what you are doing is even legal?
http://www.pirateboxblues.com/).
If you want to go forward with this venture, you really need to sit down with an attorney, who can review all of the relevant facts in your case, and advise you accordingly.
If there are any ideas you have that I'm not thinking about then please let me know. I can tell this will be an ongoing process for me but I will not stop until I have a solution. That soulution very well might be just selling the service and the kits if that is not violating their rights.
See above. Talk to a lawyer. There are so many fact-based nuances here, it just really isn't possible to give you a specific answer to your questions.
