Please tell me what to do here!!!!

[Former_Member]

I am having this lady call me out for naming one of my bracelets "lucky elephant bracelet". She says that she owns the right for this name and blah blah blah. If I search lucky elephant on google, over 2,830,000 searches appear. If I search it on Etsy, over 900 appear. Lucky elephant is two common words used worldwide whether it is for a t-shirt, hand bag, ring, bracelet, or anything! She wants me to remove the name. Here is her e-mail....please tell me what you think I should do.




ear Leandra,

I am the owner of the trade name "the lucky elephant" for jewelry store services, including online sales, I am also the owner of the trademark "the lucky elephant" for jewelry, including bracelets, and I am the owner of the trademark "Good Luck Elephant" for jewelry, including bracelets.

It has come to my attention that you opened a shop on Etsy in November 2010, and that you refer to some of your items as a "Lucky Elephant Bracelet". We are all artists trying to be unique and protect our businesses. I request that you respect my trademark rights, and immediately discontinue all use of the "Lucky Elephant Bracelet", "Lucky Elephant", and any confusingly similar names or marks.

Your use constitutes trademark infringement, unfair competion and false advertising under the U. S. Trademark Act, including 15 U.S.C.1125(a). Please give me your written assurances by May 18th, 2012 that you have ceased using my marks and names. Unless we resolve this matter amicably, I will refer this matter to my attorney for further action, including seeking an injunction, damages and attorneys' fees.

Sincerely,

Jutta Hilpuesch
the lucky elephant™

[Former_Member]

eek, no idea I'm afraid but think you should contact etsy admin as I am sure they will be happy to help you. They are normally pretty quick with responding too. Good luck

[Former_Member]

"The Lucky Elephant"
is different from
"Lucky Elephant"

In which case, yes she has the name "The Lucky Elephant" trademarked.
Do a search in quotations and you'll find it.

"Lucky Elephant" is a brand of popcorn been around for decades, and lucky elephant is also a charm, restaurant, band, etc. etc. and the dear lady does not own the rights to this.

She also however makes bracelets, so you will have to compare yours to hers to make sure they are completely different.

Just to be safe, you might what to contact a free legal clinic for advise and yes, of course Etsy admin.
Good luck!

[designedbyval]

You've received a cease and desist letter for trademark infringement. Etsy admin will not help you; it does not provide free legal services. You need to contact an IP (intellectual property) attorney to have the claim against you evaluated.

[decembermoondesign]

I wonder if you changed the title to ;

A Lucky Elephant, One Lucky Elephant, Beautiful Lucky Elephant, etc...

it would be different enough to matter to her?

I had a similar letter ...and changed a tltle from "a-g-y birds" to deranged birds. The item was nowhere near to the copyright holders item..but I just didn't have the time to deal with it. Sometimes it's better to just change the darn thing.

[Former_Member]

Someone, not sure if it was you or another Estsian posted the exact same letter from the same seller for the same reason a couple months back.
This lady is pretty serious about her copywrited name. I would do as she asks because she doesn't appear to be messing around.

[kidsstore]

I recall another thread on Etsy where the seller had the same thing happen to them. It was this year, but I don't remember when. Even though Etsy can't help you with legal issues, you could ask them if they remember this issue and if there have been others with the same situation.

You might also try to pull her bracelets up on the internet and make sure that yours are not similar to hers at all. After doing that, you could respond to her that yours are completely different, and you are not copying her name as you do not use the word "The" in front of Lucky Elephant on yours or capitalize the word bracelet. I don't know if it will do any good, but it is worth a try. Apparently she is very protective of her items and trademark.

[MelsCreativeWishes]

I would changecthe name of your bracelets. it wouldn't be worth your hassle.

[Former_Member]

I just looked up on free trademark information online and she applied on April 18 and again on April 25, 2012. It appears she has trademark for The Lucky Elephant for jewelry, etc. It's also a trademark for popcprn and rice. Apparently you can traemark the same name for various products?

[kidsstore]

I just looked at your shop and bracelets. Why don't you just change the description from Lucky Elephant Bracelet to elephant bracelet, delete the caps and remove the word lucky? It's easier.

[Former_Member]

That's interesting Linda, I didn't realize the type of product made a difference on the trademark. Thanks for sharing that info.

[ModernSwitch]

What about changing it to Good Luck Elephant ?

[Former_Member]

She's trademarking the name not the product.
Names can have several variants and still be quite legal to use.
For example Lucky Elephant popcorn has been around since the 1960's? maybe earlier. So there is no way she can claim the name as hers. The popcorn makers probably have a trademark and/or copyright of their own.
Also Lucky Elephant is a generic term with a long cultural history, especially in Asian cultures. Generic terms are very difficult to trademark or copyright. This is why many people can use the same name or name variant and still be perfectly legit.

Plus if Linda is right, an application to trademark does not mean approval. She might be jumping the gun a bit as there is no guarantee she will get the name trademarked.

At any rate, you could ask her to verify her claim by requesting documentation of trademark. This is a perfectly reasonable request.

[HausofAriella]

This isn't legal advice, but she doesn't seem to have a very strong trademark and I doubt any court would uphold her claim that no other jewelry can have the words "Lucky Elephant" in their name, particularly when the bracelet in question actually has an elephant on it. However, that isn't really going to help you if you can't afford an attorney (and attorneys aren't cheap). You could try to nicely point out that she's overstepping her trademark a bit on this. Of course, the easiest thing to do is just change the name of the bracelet to just elephant bracelet or something.

[HausofAriella]

As far as trademarking the same thing for different products, courts look at several factors when evaluating trademark claims including likelihood of confusion. Trademarks are supposed to denote origin, and it's doubtful that anyone would think that a company that makes popcorn would also make jewelry, so there's very little chance of confusion between the two. I just read back though and saw that her application had been filed, but she hasn't been registered yet, so her application could be opposed.

[kidsstore]

Alex has a good point. If she cannot give you proof of the trademark having been approved, then she doesn't have any legal claim to it at this time. If she does provide proof, I would find a different name for your bracelet.

[Former_Member]

Okay, I don't mine changing it to "lucky elephant wrap bracelet"...I mean elephants have been lucky for me my whole life. I have just always loved them, so I am confused why a generic term just can't be used...

What is a cease and desist letter?

[HausofAriella]

A cease and desist letter is a letter demanding that the recipient stop doing something or face legal action.

[Former_Member]

How do I know if I got one of those?

[SerenityInChains]

The first thing you need to do is check the trademarking in the FTC trademark database, and confirm that she does, indeed, have the terms "Lucky Elephant" trademarked. In order for her C&D to stand up, I believe, it needs to be those exact 2 words with nothing else attached for a claim to stand. However, I'm no lawyer and you should certainly contact a legal service to see what your options are.

But confirming the trademark is the first step. It's sad to say, but may people will use an e-mail C&D to attempt to scare the competition into submission. It's a fairly widely used, poor business practice.

[SerenityInChains]

here is the link. http://www.uspto.gov/trademarks/process/search/

[HausofAriella]

If she was telling you to stop using that name for your bracelets because it was infringing on her trademark, it was a cease and desist letter. Generally cease and desist letters are sent by attorneys, but they don't have to be. It's basically just a warning/threat of legal action.

[Former_Member]

Here is her last response to me:

I have been working with an attorney on all my legal matters and my request to stop using "the lucky elephant" as well as similar names, is in accordance with trademark law.

I do not own the trademark for the elephant button and it can be used by anyone. However, I am the rightful owner of the trademark "the lucky elephant" (as well as "GOOD LUCK ELEPHANT") IN THE JEWELRY CLASS. Legal documentation can be found on the website of the US Patent and Trademark office.

tess2.uspto.gov/bin/showfield?f=doc&state=4005:kvu9gk.2.1

Trademark law forbids the use of the exact name, and any confusingly similar names or marks IN THE JEWELRY CLASS.

Sincerely,

XXXX



Okay, so now she said I cant use anything that is similar to it? Doesn't make sense...I looked up the trademark for "lucky elephant wrap bracelet" and no one owns a trademark for that so I should be ok if I change it to that then right?

[Former_Member]

she has the term "the lucky elephant" and "good luck elephant." thats it....she doesn't have "lucky elephant wrap bracelet"

[HausofAriella]

Once again, this isn't legal advice. Since her application is still pending, you could file a dispute, but it would probably be time consuming and difficult. It doesn't sound like she's going to let this go, so the easiest thing to do would be to change the name of the bracelet. What about titling it Elephant Wrap Bracelet, Lucky Charm or something along those lines?