Funny what a little public shaming can accomplish. It was merely a week or so ago that we were discussing one bakery in California threatening other bakeries for using the term “mochi muffin”, for which the USPTO had somehow granted it a trademark. If you didn’t read the last post and need a quick recap of why this trademark being granted was stupid, “mochi” is merely the name of a rice paste used commonly in Japan around holidays. It’s used to make lots of stuff. A “mochi muffin” is merely a muffin made of mochi, making the trademarked term entirely descriptive. The kind of thing you’re not supposed to be able to trademark.
Well, at the culmination of that last post, I mentioned that there was a decent sized online backlash to all of this. I also mentioned that someone would likely go the legal route to invalidate the trademark at some point. The latter, it seems, won’t occur, because now Third Culture Bakery says it’s going to give the trademark up voluntarily after hearing from the public.
In a social media announcement on Saturday, co-owners Sam Butarbutar and Wenter Shyu called the trademark a “huge oversight” that “ended up being hurtful.”
They said they’ve taken the first steps necessary to release ownership of the trademark, and won’t pursue any trademarks in the future. It’s a major reversal of their position just a few weeks ago, when they described the trademark as an important legal protection for their business. Third Culture secured the trademark in 2018 and has sent cease-and-desist letters to bakeries across the country to demand they stop using the words “mochi muffin.”
Reading between the lines, it’s pretty clear what happened here. The bakery tried to legally threaten other bakeries, got found out by the public, the public got angry, and now the bakery is reversing course. So, while I won’t be pinning any medals on Third Culture for this, this does once again show how public outrage and shaming can, often times, produce better or faster results than going the legal route.
While some of the public backlash was of a variety I wouldn’t condone — such as supposedly harassing phone calls made to its employees while at work — most of it was exactly what you’d expect and want. Angry reviews on Yelp. Notes left on the bakeries social media pages. Other social media groups built up to fight Third Culture’s threats.
Even Third Culture claims that much of the feedback it got was of the constructive type.
Their decision to relinquish the trademark was the result of “thoughtful, meaningful, and constructive emails and notes and letters” received after a Chronicle article detailing the trademark was published two weeks ago. The feedback “guided us to reevaluate what once was absolutely necessary for our survival, but does not serve us anymore,” Butarbutar and Shyu wrote.
Again, this is clearly also Third Culture trying to work the refs that are the public it serves, but the point stands. Activism of this sort works. We need more of it.
While trademark disputes regularly annoy me for a variety of reasons which I cover on this site, the most annoying ones of all are usually over trademarks that the USPTO never should have granted in the first place. Remember the Square Donuts thing? That mark was descriptive. ESPN’s “Saturday Night Football” mark? Also descriptive. Or the time a company managed to trademark the term “Legal Hackers” as it was the company’s name? Yeah, you guessed it: descriptive.
Now, you’re not supposed to be able to trademark purely descriptive terms for what should be obvious reasons. If the mark doesn’t inform the consumer of a product or service’s origin, and instead describes a generic product, that’s supposed to be a no-no. And, yet, the USPTO seems to regularly grant them.
Which brings us to mochi muffins. Mochi muffins are popular bakery goods, perhaps invented by the owner of a trademark on “mochi muffins”, Third Culture Bakery in California. Third Culture has recently been sending threat notices to, and in at least one case has sued, other small bakeries for the crime of making and selling their own mochi muffins.
Since Third Culture secured the federal trademark to its signature item, the bakery has been quietly working to stop restaurants, bakers and food bloggers across the country from using the words mochi muffins. Oakland’s Ramen Shop received a cease-and-desist letter from Third Culture several years ago, co-owner Sam White said. In April, a wave of businesses also received letters from Third Culture, including a tiny home-baking operation in Worcester, Mass.
Almost all those contacted quickly complied and renamed their products — CA Bakehouse now sells “mochi cakes,” for example — afraid of getting into a label battle with a relatively large, well-resourced business that ships its mochi muffins nationwide.
By now, you may be wondering what the problem is here. And that may be because you don’t know what a mochi muffin is. It’s a muffin made of — wait for it — mochi! And what is mochi? It’s a kind of rice paste that is used typically in Japan to make little cakes and other foods, often time during seasonal holidays. So, rewinding, what is a mochi muffin? It’s a muffin made of this rice paste ingredient.
And that is, as you will have already guessed, a descriptive phrase that describes the product and is non-distinctive. And yet the USPTO granted the trademark, albeit as a supplemental mark, and Third Culture is out here threatening everyone it can find.
Third Culture co-owner Wenter Shyu said he recognized early on that the bakery should protect its first and most popular product. Third Culture now keeps attorneys on retainer to monitor the trademark.
“We’re not trying to claim any ownership (of) the word mochi or mochiko or muffin,” he said. “It relates back to the one singular product that started our bakery and put us on the map. It’s how we pay our bills and how we pay our employees. If anyone else makes a mochi muffin that looks like ours and (is) selling it, that’s who we go after.”
That makes it sound like what Shyu was actually after was a secret recipe and/or trade secret, a la Coca-Cola’s recipe. Instead, he got a trademark on a descriptive phrase. And, while everyone appears to be too scared to challenge Third Culture in court, it’s doubtful the bully could win if that were to happen.
Legal experts contacted by The Chronicle questioned whether Third Culture’s mochi muffin trademark would survive a court challenge. The trademark is listed on the United States Patent and Trademark Office’s supplemental rather than principal register, meaning it’s not eligible for exclusive protection, said Robin Gross, a San Francisco intellectual property lawyer. The principal register is reserved for trademarks that are considered distinctive and are afforded more legal protections as a result.
“It looks to me that Third Culture Bakery is not going to succeed on its claim because its mark is merely descriptive, not something that can attain exclusive rights,” Gross said. “If companies are not allowed to use the descriptive words that describe their products, then trademark law has gone too far and is infringing on freedom-of-expression rights.”
Ding ding ding! And speaking of expression rights, Third Culture has also started getting some public backlash for its bullying efforts. Facebook groups are sharing stories of the bullying, and outrage is building.
I think it is inevitable that someone will challenge Third Culture’s mark eventually. And if/when that happens, it should be invalidated. Otherwise, someone out there is going to trademark “banana bread”.
When someone mentions Las Vegas, a couple of things are likely to leap directly into your brain. Gambling and casinos, but of course. Perhaps magic shows, too. And, obviously, Elvis. Yes, the idea of Elvis-themed weddings in Las Vegas has reached trope status. But Authentic Brands Group (ABG) would like to put a stop to all of that.
ABG is a licensing troll for celebrities or, more typically, their estates due to their being dead. ABG also has a history of overstating what IP and rights it actually has. Elvis’ estate, meanwhile, also has a history of targeting anyone and everyone with trademark and IP threats, and even lawsuits, that are meritless.
All of which brings us to the present moment, in which ABG is apparently going on a threat blitz against businesses and chapels in and near Las Vegas in order to cease the practice of Elvis-themed weddings.
The company that lords over the King’s image and likeness is cracking down on Las Vegas chapels that book Elvis-themed weddings and otherwise embrace his persona. Authentic Brands Group (ABG), which licenses Elvis Presley-related merchandise, has issued a cease-and-desist letter dated May 19 to several Las Vegas chapels.
ABG specifies “Elvis, “Elvis Presley,” “and “The King of Rock and Roll” as its protected trademarks.
A number of questions leap to mind. First and foremost: hey, ABG, where have you been? There have been Elvis-themed weddings in Las Vegas since 1977. That’s forty five years of completely failing to protect the trademark rights you’re now claiming in your threat letters. What’s changed? Why should this long history of anyone failing to protect this trademark in this way not be taken as abandonment or tacit endorsement? And why does a trademark somehow prevent a person or business from having someone dress as a historical public figure?
And why in the world would the estate want to put an end to a tradition that very much keeps that dead public figure in the public consciousness, leading to ongoing interest in Elvis?
Kent Ripley of Elvis Weddings is among the operators who performs as Presley and is also co-owner of the business. He’s been in business for 25 years and has never received such a warning.
“We get bookings that have been planned for three, four, five years to have an Elvis wedding,” Ripley said. “They want to protect the Elvis brand. But what are they protecting by taking Elvis away from the public?”
It’s exactly the right question to ask. And the “taking away” part is already occurring. Chapels are scrapping Elvis weddings from their offerings and scrubbing their websites of any references to The King.
And so perhaps this is how Elvis finally dies a cultural death, forty five years after his time on Earth expired. A licensing troll pushes rock and roll royalty into mere obscurity.
The last time we discussed Zara, the clothing retailer based out of Spain, it was to witness the company tripping all over itself to apologize to mainland China for denoting Taiwan and Hong Kong as countries on its website. Well, now the company is back, this time for engaging in a somewhat silly trademark opposition to another, far smaller fashion house named House of Zana. After Zara opposed the smaller company’s trademark application, claiming that the names were too similar and would cause confusion, hearings were held in the UK.
During the hour-long hearing, Zara’s attorney, Julia King, submitted that the House of Zana trademark application should be refused because it was too similar in name, which could result in customers confusing one trademark for another.
Ms King said the word Zana was “one small brush mark” away from Zara and added “House of” was a common term used by “many parties” as a way of referring to fashion businesses.
There are a couple of problems here. First, yes, “Zara” and “Zana” are one letter away from each other. But, as House of Zana owner Amber Kotrri noted in that same hearing, the application is for “House of Zana”, instead of just “Zana.” It’s the entire trademark that Zara must oppose, not one small part of it.
From there, we can get into Zara’s claim that “House of” is so common a term that it shouldn’t even enter into the equation. First, that’s not really how this works in trademark law. And even if it was, “House of” is obviously not that commonly used in this marketplace, given that Zara itself is not known anywhere as “House of Zara”. It’s just Zara. And for the purposes of customer confusion between these two specific brands, that makes a difference.
Mrs Kotrri added that Zara had failed to provide evidence to prove consumers would find House of Zana misleading, and that it was clear to customers there was “no opposition”.
Likely because there is no consumer confusion to be pointed at, in this case. And, we absolutely must add to all this that Zara appears to have recently adopted a far more aggressive posture when it comes to policing trademarks. House of Zana is not the only company Zara has targeted with claims that other company’s names are too similar to its own. For instance, Zara has also challenged the trademark for Tara Sartoria, ostensibly because “Tara” and “Zara” are too similar. Tara Sartoria, by the way, is owned by Tara Nguyen, who employs “disadvantaged women in Indonesia and Vietnam” as a way to help them.
I could also note that Zara has been the subject of accusations that it infringed on the designs of other designers and sold them as its own in the past, but I won’t… Oh look, I guess I just did. The point here is that this is yet another instance of a big company trademark bullying smaller companies, mostly because it can. Certainly House of Zana is of no threat to Zara, yet here we are.
You will recall that we have been discussing a trademark suit between Sycamore Brewing and Stone Brewing recently. As you can see in images in the post we did about the lawsuit, and then the follow up post on the battle over an injunction requiring Stone Brewing to sticker over the offending branding, it’s pretty clear that this constituted trademark infringement. Part of what made this story noteworthy is that Stone Brewing has, for years, represented itself as a craft brewer ready to take on the big breweries on matters of intellectual property, as though it were some paragon of the industry. Instead, Stone Brewery appears to have turned to both trademark trollingand trademark infringer of smaller breweries.
The settlement came last week, shortly after Stone Brewing filed a countersuit against Sycamore calling its legal action a “sham.” The Escondido craft beer maker claimed that Sycamore didn’t disclose to the court — nor apparently to the U.S. Patent and Trademark Office —that a different brewery with distribution in 14 states has been using the phrase “Keep It Juicy” on its IPA beer cans since 2017.
That’s three years before Sycamore registered to trademark the tagline, which was granted in August 2021, according to Stone. The brewery contends this prior use of “Keep It Juicy” raises serious doubts over the trademark’s validity.
Now, serious doubts do not equal “sham”, of course, but I suppose such accusations are now moot. The case has settled. The post I linked to references that the preliminary injunction has been lifted, but doesn’t seem to detail out whether the agreement includes Stone’s promise to no longer use the trademarked slogan and dress of Sycamore Brewing. It is my understanding that the settlement does include that however, making this a win for Sycamore.
Stone Brewing, annoyingly, is back to playing the victim here.
“While we are relieved this case is over, we feel it’s necessary to set the record straight,” said Stone Brewing Chief Executive Maria Stipp. “Sycamore forced Stone to incur hundreds of thousands of dollars in legal expense to defend ourselves and sent our team scrambling to sticker 21,000 boxes of beer in warehouses across the country taking more than 600 hours of valuable time. As we now know, all of this was because of Sycamore’s baseless trademark claims and opportunism.”
… said the company that successfully sued Molson Coors for making the “stone” part of “Keystone” beer’s label really big. Seriously, go review that case; it’s pretty much all there was.
This case was much more striking in terms of the use of another’s registered trademark. I frankly don’t remember David being so petulant after slaying Goliath.
Conde Nast has shown itself to be heavy-handed in the past when it comes to IP laws. And like any other large publisher, Conde Nast makes a habit of policing its IP, including its trademarks. But when you do that policing, you really do have to commit to at least having the bare minimum of common sense, or else you look really, really foolish.
You know, like when Conde Nast sent a threat letter to The Star Inn at Vogue, a pub in the UK in a small village called Vogue, all because Conde Nast also operates a little magazine you may have heard of called Vogue.
The Star Inn at Vogue, thought to be at least 150 years old, is in the small village of Vogue, near Redruth. Vogue magazine publisher Condé Nast told the pub its name might “cause problems”.
The letter demanded to know the nature of the pub’s business (really?) and whether the pub would be open to changing the name it’s had for 150 years. Mark Graham, of the pub, has basically laughed all this off. In fact, he responded to Conde Nast with a letter of his own.
Mark Graham, who has been landlord with his wife Rachel for 17 years, wrote back, saying: “Whilst I found your letter interesting on the one hand, I also found it hilariously funny on the other.”
“I explained to them that the village has been here for 200 years, the pub slightly less than that. We chose the name of the pub to be the name of the village.”
He said he was had considered countering their claim over the use of the word because “we were there first”.
Now, to its credit, Conde Nast has since responded to Graham indicating that it was “grateful” for his reply, happy to learn more about the Inn and the surrounding “part of the country” (mmkay), and that after “further research” that Conde Nast probably never should have sent the threat letter to begin with.
And that’s really the problem here. Conde Nast is free to police its trademarks all it wants, but it should probably be done with at least a modicum of professionalism. Maybe the 10 minutes worth of research it would take to know not to send the threats could have been performed before the threats were sent, rather than afterwards.
But, hey, I guess it’s easier to just shoot first and ask questions later.
Now this one surprises me. We’ve been talking recently about a trademark infringement suit brought against Stone Brewing by Sycamore Brewing, a much smaller brewery. Fresh off a massive win against Molson Coors over its decision to alter the branding for Key Stone beer to feature the word “stone” in very big letters, Stone Brewing found itself on the other side of a lawsuit. Sycamore has a registered trademark on the slogan “Keep It Juicy” for one of its beers… and Stone Brewing recently began using that same slogan in a style that is, well, extremely similar to that of Sycamore’s usage. How similar? Well…
Like I said, pretty similar as far as these disputes tend to go. Same words, similar font styles and layout, etc. In fact, this all seemed egregious enough that Sycamore’s lawyer, Marc Randazza, managed to win a preliminary injunction from the court, which ordered Stone to sticker-over the slogan on its packaging if it were to continue selling cases of the beer. As far as remedies go, this seemed like a reasonable middle ground, which, well… more on that later.
But Stone has decided to fight the injunction, requesting a stay on it while the two sides continue to battle the infringement case in the courts. Sycamore has responded opposing the stay request. There’s a lot going on in both documents, only some of which I’ll highlight, but you can read both embedded below.
On Stone’s motion to stay, here are a couple of highlights so you know what’s going on. First, Stone indicates that the court’s order to sticker-over the offending slogan on its packaging represents an “enormous burden” to the company. This is mostly referring to the fact that Stone would have to work with its downstream partners and/or retailers to do the stickering and to concerns over what this would do to its reputation.
Beyond the actual labor involved, it is enormously disruptive to Stone’s business operations (whose personnel have been required to shift their attention away from their ordinary responsibilities) and to the business operations of the non-party distributors and retailers with whom Stone contracts. (Id. ¶¶ 4-9.) Stone’s relationships with its distributors is critical to its business success, and demanding that they and their retailers commit significant resources to assist Stone in complying with the Injunction strains those crucial relationships, causing unquantifiable harm to Stone’s business and reputation.
The reputational issues here seem rather silly, given that it was Stone’s use of another’s trademark that is causing all of this action. And, while I have yet to see any attempt by Stone to invalidate Sycamore’s registered mark, Stone plays a shell game throughout its motion when it comes to the nature of the trademark in question. It makes a great deal of noise about how the term “juicy” is generic to the craft beer industry, which it is, before later in the filing deftly referring to the full slogan “Keep It Juicy” as generic as well, which it very much is not. Further down, it attempts to switch to branding “Keep It Juicy” as “descriptive words”. In the realm of trademarks, the slogan is not descriptive in the manner in which the filing hints. For example, the following assertions are merely two paragraphs apart.
In March 2022, Stone switched to a different type of box which had a half-height flap that folded down from the top and a second flap that folded up from the bottom. (A-112.) Stone shrunk the image of the can so that it fit on the top flap, and used the descriptive words “Keep It Juicy” to fill in the otherwise-empty space on the bottom flap.
Stone used the term “juicy,” as many other breweries have done, because it captures the particular characteristics of this IPA, and its personnel selected the (very common) phrase “Keep It Juicy” entirely independently of any Sycamore tagline.
It’s like the filing can’t keep straight how it actually wants to position its usage. Like I said, there’s more going on in the filing as well: claims Sycamore won’t be harmed by a stay in the injunction, claims that it had to file for the stay outside of the District Court in which the larger case is being heard (mostly because it didn’t get the decision it wanted on the initial injunction), etc.
Sycamore’s rebuttal has plenty in it as well. But let’s get right at the heart of the “more on that later” hints I keep issuing. A massive part of Stone’s request for a motion to stay is predicated on the enormous burden it would put on the company and its reputational harm with distributors. There are two problems with that. For starters, Stone claimed it would take roughly 80 minutes per sticker application to each instance of its packaging. That’s pretty silly on its face. But, more to the point, Stone also failed to disclose that nearly half the product in question is sold in California, where the distribution is done by Stone directly.
Stone claims that stickering will hurt its relationship with its distributors. However, Stone fails to disclose that Stone distributes its own product in much of California. Id. at ¶¶28-30. Why would Stone get angry at Stone and discontinue Stone products because Stone was being compelled to do precisely what Stone’s own counsel asked the Court to let it do? Stone could sticker every box, at least in its self distribution area, within 24 hours, if it wanted to.
Second, and this is sort of a big one: stickering over the offending logo was Stone Brewing’s idea.
On April 20, 2022, the District Court orally granted the preliminary injunction. A-306 at 58:9-21. However, at the hearing, Stone’s counsel asked that the Court modify the initial injunction – to permit Stone to place stickers over the infringement rather than simply pulling all infringing product from shelves.
In other words, in one court Stone Brewing requested the stickering process, while in another claiming that such a process is an extreme burden on the company. Can’t do that.
Again, there’s more in Sycamore’s filing: Stone introducing new evidence to stay the injunction, challenging the stay in a separate/new court, claims that actual confusion must be shown for an injunction being incorrect, etc. It’s a fairly thorough takedown of a stay request from Stone that to this writer’s eye appears to be quite silly.
It’s a new court, so we’ll wait to get a decision. But regarding the overarching infringement case, this one still feels pretty cut and dry as far as trademark cases go.
Well, this one is moving fast. It was only a few days ago that we talked about a lawsuit filed by Sycamore Brewing against Stone Brewing for what sure looked like a pretty blatant ripoff of the former’s trademarked slogan, “Keep It Juicy”. What made this story notable was that Stone Brewing is just coming off a large win in court against Molson Coors over a rebrand of Molson’s Keystone beer trade dress. In that fight, as it often does to anyone who will listen, Stone Brewing made a bunch of noise about how it was the protector of the craft beer industry and billed its $56 million win over Molson as a David vs. Goliath scenario. And, yet, here was David turning around and simply ripping off a smaller brewery’s trademark.
Sycamore’s filing both struck out at the story that Stone likes to tell for itself, but also brought the goods. The side by side comparison of the uses in question tell pretty much the entire story.
For that reason, the case seemed like a winner to me. I did not, however, expect that a little over a week later a judge would go so far as to force Stone Brewing to cover up the infringing slogan on all unsold products while litigation continues. Marc Randazza got this win representing Sycamore.
[Judge Frank] Whitney ruled that Stone Brewery is allowed to sell the rest of the current Stone “juicy” beer already out in the market with the branding “Keep It Juicy” on the box. However, Whitney said Stone Brewery must cover up the labels on boxes with white labels to ensure there will not be any sort of “consumer confusion.”
Randazza asked for more, including the removal of the product from stores rather than allowing it to be sold, but this is still a significant order from the court. Again, the trial hasn’t even started yet, though if the case gets that far, it is anticipated it will start sometime over the summer.
The immediate question that leaps to mind is just how much of that Keystone money Stone Brewing is going to get to keep, or will some of it be needed to pay Sycamore Brewing.
What is it about producing champagne that turns you into a trademark bullying jackwagon? Readers here will know that the Comite Champagne, or CIVC, is purely a trademark bully for champagne producers out of France, policing the rest of the world to ensure nobody dares call anything not produced by one of its constituents anything remotely resembling “champagne.” But this ownership culture that must certainly have been learned from the top down in this micro-industry has also spilled over at the winery level.
For an example of this, you need only look to Louis Roederer, producers of famed brand Cristal, and its attempt to oppose the trademark registration of a small Oregon winery that makes a sparkling wine branded as Crystal Visions.
Melaney Schmidt and Malia Myers are the sparkling wine specialists behind Landmass Wines in Cascade Locks. In 2019 the duo named a new sparkling pinot noir Crystal Visions in honor of their admiration for the singer Stevie Nicks. The phrase “crystal visions” appears in the lyrics of the Fleetwood Mac song “Dreams.”
Schmidt and Myers then did what they should have: applied for a trademark on the brand with the USPTO. From there, an attorney was assigned to review the application and to search out any potentially conflicting trademarks that had already been registered, and then pushed the application through to publication. From there, the companies and individuals of the world got 30 days to oppose the trademark.
Louis Roederer asked for an extension to review and then finally filed an opposition to the mark. In addition, counsel for the company sent a letter to Landmass Wines claiming that its branding could cause confusion with the public between the two brands.
And that, dear readers, is pretty fucking stupid. Cristal is a hundreds-per-bottle French sparkling white wine sold in a distinctive bottle. Crystal Visions is a sparkling red wine that costs about as much as a short cab ride and sold in a bottle that looks nothing like a bottle of Cristal. There is no real confusion to be had here.
Cristal is made with grapes from grand cru vineyards in France’s Champagne region. Cristal’s distinctive clear glass bottle is wrapped in gold cellophane to protect the wine from ultraviolet rays. The bottle features an understated label and a traditional cork. Cristal is also expensive and enjoyed by both David and Victoria Beckham.
Crystal Visions is made with grapes from Underwood Mountain in the Columbia Gorge, and it is cellophane-free. The wine’s label is pure pop art, and the bottle is sealed with a metal crown cap. Crystal Visions is inexpensive, and it is unknown whether the Beckhams have ever enjoyed it. If they did, they could buy a case of Crystal Visions for about the price of one bottle of Cristal.
This should be a simple case to make and win in front of any sane juror or judge. Or member of the public. Or the USPTO attorney who reviewed the application. Or, let’s say, a particularly intelligent golden retriever. But, because Louis Roederer is big and Landmass Wines is small, the former can simply drown the latter in court and legal costs. As a result, Landmass has decided to simply abandon its application and rebrand the wine.
“We’re being told we can’t use something we worked hard to create, only because we’re so small. It feels like bullying, and there’s nothing we can do about it,” Myers said.
It’s been a bit since we’ve talked about 3D printing, which I mostly took to mean that the world realized that there was no massive threat here and that we all collectively decided to make this a non-controversy. Early on there was some noise made about larger companies viewing the ability for the public to manufacture certain things at home with these printers being a copyright, patent, or trademark concern. And sure, there was some of that. Especially when it came to guns. But, by and large, 3D printing has become a full on thing for hobbyists and maker communities.
Perhaps one of the widest applications of 3D printing has been in the automotive parts space. There are plenty of sites where you can get print files for auto parts, and some car manufacturers have actually gone ahead and released those files to those sites themselves. Or, if you’re Honda, apparently, you decided that all of this is trademark infringement and shotgun-blast takedown requests to all the 3D print sites you can find.
Recently, I noticed a part that I made for my Honda Accord was removed from Printables, the newly rebranded 3D printing repository offered by Prusa. There seemed to be no rhyme or reason for it, but I didn’t think anything else about it…until reports of a mass deletion started popping up on Reddit.
“I can confirm to you that we have received a letter from a lawyer representing Honda, informing us that we were required to remove any model which used ‘Honda’ in the listing, the model itself, or one of several trademarks/logos also associated with Honda,” a Prusa spokesperson told The Drive in an email. “This will also be related to the naming of the files it self (sic), as for Honda this would be considered as a violation of their trademark/patents.”
As you often find the moment trademark law is mentioned in one of these disputes, the source post from The Drive falls all over itself to mention that Honda must enforce its trademarks or risk losing them. That is only as true as a nuance-free, single sentence about trademark law could possibly be, of course. Honda does have to enforce its trademarks… when there are instances of public confusion as to the source of products. That isn’t what’s happening here. By and large, every one of these files that is being taken down is including Honda trademarks merely as descriptions of what cars the part is going to work with. Using logos and such is likely a valid concern, but that isn’t the same as file names and descriptions.
Honda hit several other sites with the same takedown requests. And, because this is all monumentally stupid, what gets taken down and what doesn’t appears to directly relate to the order in which words in the description are used.
A lot of it comes down to wording. Some files that were taken down were named something along the lines of “Honda Civic Cup Holder,” whereas others were titled similar to the likeness of “Cup Holder for Honda Civic.” The order of that wording matters and could be the reason Honda responded in the way it did, and it’s why Prusa obliged by taking down all items that referenced the Honda brand.
As with all great comedy, there is logic in there… but that logic is petty and dumb. Prusa thinks similarly, claiming that it’s reaching out to other manufacturers to help them see that there is no threat here, only an opportunity to drive more car sales given that customers can have ready access to replacement parts should they break down.
The comments on the post drive home the downside for Honda, as well. The most poingant of them was probably, “Time to start using torrent files again.” Or, hey, maybe Honda could back off this desire for total control a tad and embrace the maker community instead, since they’re going to get their 3D print files one way or the other.
