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International Watchman - NATO lawsuit and other issues

9K views 39 replies 16 participants last post by  ganson 
#1 · (Edited)
This is an interesting read regarding the use of the term NATO when it comes to watch straps and the lawsuits that are being brought by International Watchman, its trademark holder.

This is an ongoing issue as there are a strap retailers attempting to push others out of e-commerce websites as well as IWW continuing to bring additional infringement suits.

IMO - it's in your best interest to give this a read and consider how this trademark (bogus IMO) of this common term (NATO) is being used to bully strap retailers. Take note of this issue and keep it in mind when selecting your next "NATO" strap for purchase.


Companies involved in this case: International Watchman, Inc.; The Nato Strap Co.; Expo International, Inc.; Clockwork Synergy, LLC; ADNweb, LLC; Worn & Wound

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From Intellectual Property Law Daily, October 17, 2014

“NATO” and “NATO G-10” marks not proven generic for watches

By Peter Reap, J.D., LL.M.

Several entities and individuals (the “defendants”) who had been sued by International Watchman, Inc. (the “plaintiff”) for trademark infringement failed to establish that the plaintiff’s registered marks “NATO” and “NATO G-10” for “watches; watch bands and straps” were generic as a matter of law, the federal district court in Cleveland has decided (International Watchman, Inc. v. The Nato Strap Co., October 16, 2014, Gaughan, P.). Thus, the defendants’ motion for summary judgment of trademark invalidity for genericness was denied.

Background. After registering its two marks, the plaintiff filed this lawsuit asserting two claims for relief against each defendant. The plaintiff first alleges that the defendants engaged in both unfair competition and trademark infringement in violation of the Lanham Act. In its second claim, the plaintiff also alleges that the defendants engaged in unfair competition under state law.

The defendants moved for summary judgment seeking to invalidate the plaintiff’s trademarks on the grounds of genericness.

Analysis. The defendants argued that “NATO” and “NATO G-10” are generic terms for a certain military style watch band. According to the defendants, these terms are commonly used in the watch industry to describe a watchband comprising a “flexible (fabric or leather) strap that is one piece, fits under the spring bars of the wristwatch, so that it will not fall, if one spring were to break, and includes a plurality of rings for securing the loose end of the strap.” The defendants argued that the watch industry, journalists, members of the public, and the plaintiff itself all use the terms “NATO” and “NATO G-10” to generically describe these types of watches and watch bands.

In response, the plaintiff argued that its trademarks, by virtue of their registration, are entitled to a presumption of nongenericness. In addition, the plaintiff pointed out that many of the defendants’ citations are to Internet postings, which the plaintiff claimed are inaccurate. The plaintiff further supplied the court with a survey.

A generic or common descriptive term is one which is commonly used as the name or description of a kind of goods. It cannot become a trademark under any circumstance, the court noted.

“The primary significance of the registered mark to the relevant public...shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it is used. Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 406 (6th Cir. 2002). To determine whether a mark is generic, the court must look to the “relevant public.” Ordinarily, “it is the term’s meaning to consumers, not professionals in the trade, that is the test of genericness and descriptiveness for ordinary consumer goods.” Id

Here, the defendants pointed to Internet publications from various sources demonstrating a generic use of the terms “NATO” and “NATO G-10.” By way of example, the defendants pointed to: (1) An advertisement from Amazon for a “Seiko 5 Sports #SRP277 Men's Military Nato Black Grey Band 100M 24 Jewels Automatic Watch”; (2) Blog from a London shopper from 1999 indicating, “Three others had mostly junk, although there were NATO straps at 5 pounds each”; and (3) Internet publications suggesting that “at least 63 prominent watch companies include ‘Nato’-straps with their watches.”

The defendants also pointed out that the plaintiff itself used the term “NATO” generically. For example, an order placed by one of the plaintiff’s reseller customers requested the purchase of “Nato style straps.”

In response, the plaintiff provided an affidavit from its president. He averred that there were a number of references throughout the industry to the types of watch bands at issue in this case. Some are generic, while others are nongeneric.

The plaintiff further provided a document entitled “Consumer Survey: Public Views Concerning the Primary Significance of NATO and NATO G-10.” The results of the survey showed that anywhere from 89.22%-94% of people believed “NATO” to be a brand name and 94.25%-97% of people believed “NATO G-10” to be a brand name.

In addition to presenting its own evidence, the plaintiff disputed the evidence relied on by the defendants, the court observed. According to the plaintiff, many of the defendant’s references were inaccurate and most of the watchmakers did not sell “NATO” bands.

Viewing the facts in the light most favorable to plaintiff, reasonable minds could differ as to whether the phrases “NATO” and “NATO G-10” are generic, the court ruled. Here, the defendants pointed to a number of Internet postings from watchmakers, consumers, and journalists tending to demonstrate that some of the “relevant public” used the term generically. On the other hand, the plaintiff pointed out that searches of many watchmakers’ websites showed that they did not use the phrase “NATO” or “NATO G-10.” In addition, the plaintiff provided the court with a statistical analysis demonstrating that the general purchasing public did not believe that the words “NATO” or “NATO G-10” are generic names for military style watchbands.

To the extent that the defendants claimed that the general public is not part of the “relevant public,” the argument was rejected, the court determined. As set forth in Nartron, in the “appropriate case,” the “relevant public” includes “manufacturers, customers, suppliers, vendors, and the trade and technical press.” To be clear, the court did not limit the “relevant public” to the “general public.” Rather, the court merely noted that the knowledge of the general public—as consumers of watch bands—was relevant to determining genericness in this case. As such, the plaintiff’s survey was one piece of evidence to consider.

Whether a name is generic is a question of fact for the jury. Here, the defendants’ evidence was insufficient to establish genericness as a matter of law, the court held. The plaintiff’s evidence, together with the presumption that exists in favor of nongenericness was sufficient to create an issue of fact.

The case is No. 1:13 CV 1986.

Attorneys: C. Vincent Choken (Choken & Welling) for International Watchman, Inc. Robert M. Ward (Dilworth IP) for The Nato Strap Co., Expo International, Inc., Clockwork Synergy, LLC, ADNweb, LLC, and Worn & Wound.

Companies: International Watchman, Inc.; The Nato Strap Co.; Expo International, Inc.; Clockwork Synergy, LLC; ADNweb, LLC; Worn & Wound
 
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#2 ·
More info on this trademark of a commonly used term...


NATO Trademark Information

International Watchman, Inc.
Watches; watch bands and straps
Perfect for these industries



Words that describe this mark
watches watch bands straps





This is a brand page for the NATO trademark by International Watchman, Inc. in Brunswick, OH, 44212.

Write a review about a product or service associated with this NATO trademark. Or, contact the owner International Watchman, Inc. of the NATO trademark by filing a request to communicate with
the Legal Correspondent for licensing, use, and/or questions related to the NATO trademark.


On Friday, June 04, 2010, a U.S. federal trademark registration was filed for NATO by
International Watchman, Inc., Brunswick, OH 44212. The USPTO has given the NATO trademark serial number of 85054829. The current federal status of this trademark filing is CONTINUED USE AND INCONTESTIBILITY ACCEPTED. The correspondent listed for NATO is John D. Gugliotta of LAW OFFICES OF JOHN D GULIOTTA PE ESQ LP, P.O. Box506, Richfield OH 44286 . The NATO trademark is filed in the category of Jewelry Products . The description provided to the USPTO for NATO is Watches; watch bands and straps.
 
#3 ·
Word mark: NATO Status/Status Date: CONTINUED USE AND INCONTESTIBILITY ACCEPTED
3/21/2016

Serial Number: 85054829
Filing Date: 6/4/2010
Registration Number: 3907646
Registration Date: 1/18/2011
Goods and Services: Watches; watch bands and straps
Mark Description: NOT AVAILABLE
Type Of Mark: TradeMark
Published For Opposition Date: 11/2/2010
Last Applicant/Owner: International Watchman, Inc., Brunswick, OH 44212

Mark Drawing Code: Standard Character Mark
Design Search: (NO DATA)
Register Type: Principal
Disclaimer: (NOT AVAILABLE)
Correspondent: John D. Gugliotta
LAW OFFICES OF JOHN D GULIOTTA PE ESQ LP
P.O. Box506
Richfield OH 44286



Use in Commerce Trademark - Applicant has provided proof of use of this mark in commerce to USPTO.

Classification Information

Primary Class: Class (014) - Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments.

First Use Anywhere: 2/2/2003
First Use In Commerce: 5/15/2003
 
#4 ·
Origin of the term NATO in reference to G-10 straps:

The strap that collectors call "NATO" (not to be confused with the Rhino, Waterborne, or Zulu straps) is based upon the standard watch strap issued by the British Ministry of Defense (MOD). Called the "G10" by members of the British military because of the form (G1098) used to requisition the strap (and other items) from inventory, the reason it got its "NATO" name is because the strap has a NSN or NATO Stock Number which identifies this type of strap. Incidentally, the actual military spec strap comes in only one color (Admiralty Grey) and one width (20mm). The hardware specs have not changed (chrome plated brass), though at least some of the straps currently issued have stainless steel fittings. And there are actually TWO NATO stock numbers for the straps: Army/Navy (6645-99-124-2986) and RAF (6645-99-527-7059).


Good read on the topic from Gear Patrol:

http://gearpatrol.com/2014/01/07/icon-nato-strap/
 
#6 ·
Yes, but this is a trademark of a commonly used term (NATO), which was used for decades prior to this trademark application being filed. It's like me trademarking "water" and suing everyone who uses it...so silly
 
#8 ·
I think you may be a little late to the party. From what I've heard, most companies caved in and international won the right to trademark the name.
Unless something happened in the last few months?
 
#9 ·
No, just reminding people of the issue. I've known about it for a while, but there may be folks who don't and would like to know more about companies prior to making a purchase.


I'm waiting for him to try and sue Omega for their use of NATO. That would be interesting. :clapping-hands-abov
 
#14 ·
I didn't read all the comments but maybe some have had a similar experience lately. I had a watch with "NATO" included listed on eBay and was forced to take it down because of trademark infringement! Complaint against me was filed by International! It's like they went listing hunting :/

Worst part was I originally had a free listing deal... Had to pay for re-list :/ Now the winner never paid! Doubled F-ed!
 
#15 ·
Oh yeah, you're not alone. I've read of many people having that same problem on ebay. Seems like he goes after the little guys.
 
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#17 ·
Not being a lawyer I really don't understand why someone succeeded in trademarking an existing acronym. North Atlantic Treaty Organisation. With the result that no one (?) is allowed to use this in combination with watch straps anymore. I'm dumbfounded. Let them use OTAN instead.
 
#21 ·
The design isn't his own. That makes it even more rediculous. That is called being a patent troll. Only in name because the design must be public domain now but the name not anymore. That judge must have been dreaming and I hope this ruling gets overturned.
 
#23 ·
Perhaps this is why Trump is talking about disbanding NATO, doesn't want this Jackass company (no disrespect for Jack Ass Leather) suing them over the use of the name <sarc>
 
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#31 ·
Good article. I posted a link to this at FB and my site. Amazing how this was allowed to happen. I have to think that the trademark will be overturned if challenged in the courts.
 
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#32 ·
I know the following sounds childish and it won't make a difference but I will never, ever buy any goods off of them/him. Never. Wouldn't accept it if they were giving it away.
 
#33 ·
I just visited their 'site', an amateurish affair mentioning new watches for 2008 and 2009. I'll let it go now :D
 
#34 ·
http://www.nato.int/cps/en/natolive/contact.htm

This topic was also discussed on the military watch forum in 2012.

Take a good look at the trademark. It is NATO-G10. It is not NATO nor G10 as stand alones. It must be one word so if you list something as a NATO strap or G10, you are good.





 
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