Monday, April 13, 2009

The history of the Thread Bears Trademark

Recently several of the list aunties and the list mom as well as the threadanimals group itself were publicly implicated in trying to abuse someones trademark. In the past we have used legal recourses and civility to deal with the trademark issue. However, we did think that the record be set straight. The following is a timeline that shows the history of the trademark "Thread Bears" as well as other relevant trademarks.At the end of the time line is a link to a much more detailed open letter for those that wish to further examine the logistics of this case. This Time Line and open letter are the opinion of the blog owners and not to be considered legal counsel. Thank you for your time and support.

Time Line

1980s - 2000
~ Matt Walsh (New Mexico - Our Secrets, Ltd®.) begins use of term Thread Bears: receives Trademark (aka 'Mark') from USPTO (United Sates Patent & Trademark Office) - Thread Bears® in 1997
'Mark' has Objections to overcome: TM Act, Sections 2(e) and 2(f) in record from the beginning - USPTO deems M Walsh’s Response overcomes Section 2(e) -" 'Merely' Descriptive", but maintains TM Act, Sections 2(f) "Acquired Distinctiveness" (other Uses are applicable) remain in Mark
~Both Berta Hesen-Minten (B H-M) and Susan Aucoin/Emma Petersen (SA/EP) presenting miniature crocheted teddy bears and other designs to collectors in many different venues.
~B H-M - used trade name - B-Wear™
~SA/EP - used trade name - Divine Designs™

2000 - 2001
~Both parties brought their designs to online markets - websites, auctions and trade magazine coverage
~SA/EP receives TM Nov 2001 - Threadbare Designs™

~B H-M changes trade name to ThReAdTeDS™

~Descriptive and common use by all have caused phrase/term to lose Acquired Distinctiveness status, but remains as TM Act, Section 2(f)) to become Generic; no longer eligible for TM protection, and TM may be challenged at any time.
~USPTO required SA/EP to acquire Mark for Thread Bears® in order to Register "Thready Bears: Our Little Knotheads®"
~By 2003 'thread bear(s)' was the well-known phrase used by Collectors, world-wide bear makers, online web search engines, publications, etc... for these textiles in this International Class of Goods

~SA/EP post notice - 9 July 04 eBay 'Me' page; own Mark - Thread Bears®: no one may use it. 'Thread bears' also used incorrectly there—i.e., 'thread bears' - lower case: generically, descriptively— three times in this document.
~Too remote a notice to be considered "Public": SA/EP maintain not part of larger bear world due to limited funds: withal can hardly fault rest of world for not having seen a 'Notice' on last page of an auction site.
~SA/EP not use Thread Bears® to function as a proper 'Mark': repeatedly and consistently as adjective/noun descriptive phrase/term for own products, even used generically in own documents/website/patterns while requesting others not to use at all, through mid-2007, thus not using correctly and for what is expected of others.
~Select __few__ artists targeted of the hundreds using phrase are sent emails saying "Do not use the Mark 'Thread Bears®'
~To date, not all artists were contacted/'Policed': many used with complete freedom then; have continued to do so yet. B H-M was and remains primary focus (see latest SA/EP letter - March 2009)
~Policing must be continuous, consistent and 'across-the-board'. Consequence of continuous failure to police Mark: SA/EP have acquiesced to common and generic use of 'thread bears' by others.

~January - SA/EP apply for TM - Thread Teds by Thread Bears™, incorporating world-wide recognized, trade name of another artist - B H-M - ThReAdTeDs™ - into new TM application; 'Intent to Use' as of Jan 2005
~February - SA/EP begin inconstant 'policing' of Mark through email, select few chosen artists to email
~February - SA/EP cause eBay to pull multiple auctions containing the words 'thread' and 'bear' if placed together in auction text, ex: thread bear. Not all, just select few
~February - B H-M files to Register own trade name - ThReAdTeDs™ - use in commerce beginning early 2002
~Artists submit timely 'Letters of Protest' to USPTO against 'Thread Teds by Thread Bears™' application, to stop the absorption of B H-M's long-recognized trade name
~Artists decide there is evidence in the USPTO laws that covers Cancellation process as well, which is at the root of these cases. **See Open Letter: J. N Roberts letter
~Artists retain US Intellectual Property (IP) attorney to be guided through the law court system of Protest (TTs by TBs application)and Cancellation (TBs Mark) processes

~Benelux TM European Registration of ThReAdTeD® applied for and awarded, B H-M, citizen of the Netherlands, in accord with the USPTO International Agreements

~ 2 Feb (USPTO Office Outgoing Action) SA/EP required to disclaim 2 terms on application: thread teds and thread bears. Maintained and repeated yet to present date
~Decision on ThReAdTeDs® and Thread Teds by Thread Teds™ Marks are 'In Suspension'
awaiting outcome of Thread Bears® Cancellation proceeding

~Artists decide to use Summary Judgment rather than full court trial for Cancellation decision

~Summary Judge decides SA/EP retain Thread Bears® Mark

~ SA/EP application for Thread Teds by Thread Bears™ begins process of review again in USPTO: USPTO's 'Final Office Action' (3 Feb 2007) is stalling fruition: refusal to agree to both Disclaimers
~Use of 'thread bears' (lower case/descriptive use of the ingredients of a product, not to represent a Company's Trade Name, i.e., Thread Bears®) currently in private use is based on documents on official USPTO file: 24 Jan 2006 - J N Roberts, Administrator for Trademark Classification and Practice, as well as USPTO Final Office Action 14 Feb 2007