Snack brand TM violation?

[Joe N]

Just put in an order for the following at GD closeouts after doing some reading and trademark searching:

K/e/t/t/l/e/C/h/i/p dot com

Seems as though the company that you would expect to own it has let it expire.

I'm no lawyer, but my understanding is that the "kettle" term, even when applied to this snack food, is considered generic in nature. Furthermore, the only active trademark I found registered to them was for their logo.

Would appreciate some extra opinions.

 

[canswift]

I had noticed that domain too and had to do a double take... You are right, it looks as if it was owned by the same folks who own KettleChips dot com (plural version). Archive shows the same content on both the singular and plural websites. I decided to pass on bidding, as I expect it will be renewed before it truly goes into Pending Delete. You're right too that the TMs seem a little thin on the ground, but I'm sure that wouldn't stop the parent Kettle Co coming after anyone using that domain. Not legal advice, just my thoughts...

 

[Joe N]

I had noticed that domain too and had to do a double take... You are right, it looks as if it was owned by the same folks who own KettleChips dot com (plural version). Archive shows the same content on both the singular and plural websites. I decided to pass on bidding, as I expect it will be renewed before it truly goes into Pending Delete. You're right too that the TMs seem a little thin on the ground, but I'm sure that wouldn't stop the parent Kettle Co coming after anyone using that domain. Not legal advice, just my thoughts...

Thanks. Appreciate the opinion.

I think that once a name hits GD Closeouts, it's too late for the previous owner to renew. So either they no longer wanted it, or someone made a boo-boo.

 

[D Haynes]

If your main end user for the domain lets it drop, who would you sell it to?

 

[canswift]

I think that once a name hits GD Closeouts, it's too late for the previous owner to renew

Not quite! The Closeout listings go for 5 days and the original registrant can renew (with a penalty) anytime during that period. That's even after you have "bought" the name. Anythime during the 5 days you're waiting for it to hit your account, you might get that email from GoDaddy refunding your purchase as the name has been renewed at the last minute.

This is a source of confusion and annoyance to many people, who reckon (not unreasonably) that if you win or buy something, then it's yours. On the plus side, by buying this way (and most GD expired and closeout purchases go through OK) you do retain the domain age.

 

[Joe N]

If your main end user for the domain lets it drop, who would you sell it to?

Actually I was surprised to see how many brands of kettle cooked chips are out there.

 

[D Haynes]

Actually I was surprised to see how many brands of kettle cooked chips are out there.

AHhhh ok. Im guessing it would definatley be a TM violation if they used it but who cares if youve sold it.

 

[Joe N]

AHhhh ok. Im guessing it would definatley be a TM violation if they used it

Based on.....?

 

[Joe N]

Not quite! The Closeout listings go for 5 days and the original registrant can renew (with a penalty) anytime during that period. That's even after you have "bought" the name. Anythime during the 5 days you're waiting for it to hit your account, you might get that email from GoDaddy refunding your purchase as the name has been renewed at the last minute.

This is a source of confusion and annoyance to many people, who reckon (not unreasonably) that if you win or buy something, then it's yours. On the plus side, by buying this way (and most GD expired and closeout purchases go through OK) you do retain the domain age.

Ah, right! Thanks for clarifying.

 

[karmaco]

There are many domains on GD closeouts that have some sort of potential trademarks. Its best to look that up before you bid although in some scenarios when there are many trademarks and a generic term you may have someone come calling to you for it and you have to sit on it and wait. The particular name you bought I bet they reregister it and you get refunded.

 

[Joe N]

There are many domains on GD closeouts that have some sort of potential trademarks. Its best to look that up before you bid although in some scenarios when there are many trademarks and a generic term you may have someone come calling to you for it and you have to sit on it and wait. The particular name you bought I bet they reregister it and you get refunded.

Yeah, certainly possible. I'll be sure to update everyone when the week is up.

I did research ahead of time and (as stated above) came to my own conclusion. Was just hoping for some other informed opinions.

 

[MapleDots]

I think they probably decided they will never sell a Kettle Chip instead of chips and let the domain drop. I did the opposite with mapledots and did not care about mapledot. Unless someone uses it in similar commerce I could not care who owns it.

Personally I would not waste my time on it. Even the company does not find it important enough to worry about.

 

[Joe N]

I think they probably decided they will never sell a Kettle Chip instead of chips and let the domain drop. I did the opposite with mapledots and did not care about mapledot. Unless someone uses it in similar commerce I could not care who owns it.

Personally I would not waste my time on it. Even the company does not find it important enough to worry about.

Yeah, entirely possible. Although a funny choice to make after 14 years in order to save 10 bucks.

If it ever lands in my account, I'll waste some time on it and see what comes. Maybe their competitors would like to sell a kettle chip!

 

[MapleDots]

You could always put up a gag site and say...

Worlds biggest kettle chip

If it gets their attention maybe they will pony up the money to buy the domain back.

 

[jberryhill]

http://tsdr.uspto.gov/documentviewer?caseId=sn85911760&docId=OOA20130814082455#docIndex=15&page=1

"Applicant seeks registration for AMERICA’S FIRST KETTLE CHIP for “potato chips” in International Class 029. The word AMERICA’S is the possessive form of the term which refers to the United States of America. The word FIRST means “coming before all others; earliest, best, or foremost.” Please see the attached evidence from http://www.collinsdictionary.com/dictionary/english/america and http://www.collinsdictionary.com/dictionary/english/first. In addition, the word CHIP is defined as “a thin strip of potato fried in deep fat.” Please see the attached evidence from http://www.collinsdictionary.com/dictionary/english/chips. In addition, the word KETTLE merely describes a characteristic of applicant’s method of cooking potato chips. Please see the attached Internet evidence, including applicant’s own website, which demonstrate that KETTLE CHIPS are a type of potato chip."

 

[Joe N]

http://tsdr.uspto.gov/documentviewer?caseId=sn85911760&docId=OOA20130814082455#docIndex=15&page=1

"Applicant seeks registration for AMERICA’S FIRST KETTLE CHIP for “potato chips” in International Class 029. The word AMERICA’S is the possessive form of the term which refers to the United States of America. The word FIRST means “coming before all others; earliest, best, or foremost.” Please see the attached evidence from http://www.collinsdictionary.com/dictionary/english/america and http://www.collinsdictionary.com/dictionary/english/first. In addition, the word CHIP is defined as “a thin strip of potato fried in deep fat.” Please see the attached evidence from http://www.collinsdictionary.com/dictionary/english/chips. In addition, the word KETTLE merely describes a characteristic of applicant’s method of cooking potato chips. Please see the attached Internet evidence, including applicant’s own website, which demonstrate that KETTLE CHIPS are a type of potato chip."

Thanks! Great info. I still understand this to mean that my term is not trademarked, since the TM would only apply to the above term. Is that a correct interpretation?

 

[jberryhill]

Word Mark RYE STREET KETTLE COOKED POTATO CHIPS
Goods and Services IC 029. US 046. G & S: POTATO CHIPS. FIRST USE: 20100121. FIRST USE IN COMMERCE: 20100121

Registration Number 4013182
Registration Date August 16, 2011
Owner (REGISTRANT) PERFORMANCE FOOD GROUP, INC. CORPORATION COLORADO 12500 West Creek Parkway Richmond VIRGINIA 23238
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record Garrett M. Weber
Prior Registrations 3090617
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "KETTLE COOKED POTATO CHIPS" APART FROM THE MARK AS SHOWN
Description of Mark Color is not claimed as a feature of the mark. The mark consists of the wording "RYE STREET" above a cityscape design with both the wording and cityscape housed in an outlined square. The wording "KETTLE COOKED POTATO CHIPS" appears in stylized form below the outlined square. Two separate lines, a thick one on top, and a thin one on bottom, appear at the bottom of the mark.
Type of Mark TRADEMARK
Register PRINCIPAL
Affidavit Text SECT 15. SECT 8 (6-YR).
Live/Dead Indicator LIVE


Word Mark AMERICA'S FIRST KETTLE CHIP
Goods and Services IC 029. US 046. G & S: Potato Chips. FIRST USE: 20130500. FIRST USE IN COMMERCE: 20130500
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 85911760
Filing Date April 23, 2013
Current Basis 1A
Original Filing Basis 1B
Date Amended to Current Register March 7, 2014
Registration Number 4523583
Registration Date April 29, 2014
Owner (REGISTRANT) Saratoga Chips, LLC LIMITED LIABILITY COMPANY FLORIDA PO Box 800 Saratoga Springs NEW YORK 12866
Attorney of Record ARLEN L. OLSEN
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "KETTLE CHIPS" APART FROM THE MARK AS SHOWN
Type of Mark TRADEMARK
Register SUPPLEMENTAL
Live/Dead Indicator LIVE


Word Mark B BARCEL CHIP'S BY PAPAS TOREADAS FUEGO NEW LOOK KETTLE COOKED POTATO CHIPS
Registration Number 4347579
Registration Date June 4, 2013
Owner (REGISTRANT) Grupo Bimbo, S.A. B. de C.V. CORPORATION MEXICO Prolongacion Paseo De La Reforma No. 1000, Col. Pena Blanca Santa Fe Mexico City MEXICO 01210
Attorney of Record Joshua S. Frick
Prior Registrations 3770433;3783818
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "CHIPS", "PAPAS", "NEW LOOK", "KETTLE COOKED POTATO CHIPS", AND THE REPRESENTATION OF THE POTATO CHIPS AND THE LIMES APART FROM THE MARK AS SHOWN
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

 

[Joe N]

Word Mark RYE STREET KETTLE COOKED POTATO CHIPS
Goods and Services IC 029. US 046. G & S: POTATO CHIPS. FIRST USE: 20100121. FIRST USE IN COMMERCE: 20100121

Registration Number 4013182
Registration Date August 16, 2011
Owner (REGISTRANT) PERFORMANCE FOOD GROUP, INC. CORPORATION COLORADO 12500 West Creek Parkway Richmond VIRGINIA 23238
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record Garrett M. Weber
Prior Registrations 3090617
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "KETTLE COOKED POTATO CHIPS" APART FROM THE MARK AS SHOWN
Description of Mark Color is not claimed as a feature of the mark. The mark consists of the wording "RYE STREET" above a cityscape design with both the wording and cityscape housed in an outlined square. The wording "KETTLE COOKED POTATO CHIPS" appears in stylized form below the outlined square. Two separate lines, a thick one on top, and a thin one on bottom, appear at the bottom of the mark.
Type of Mark TRADEMARK
Register PRINCIPAL
Affidavit Text SECT 15. SECT 8 (6-YR).
Live/Dead Indicator LIVE


Word Mark AMERICA'S FIRST KETTLE CHIP
Goods and Services IC 029. US 046. G & S: Potato Chips. FIRST USE: 20130500. FIRST USE IN COMMERCE: 20130500
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 85911760
Filing Date April 23, 2013
Current Basis 1A
Original Filing Basis 1B
Date Amended to Current Register March 7, 2014
Registration Number 4523583
Registration Date April 29, 2014
Owner (REGISTRANT) Saratoga Chips, LLC LIMITED LIABILITY COMPANY FLORIDA PO Box 800 Saratoga Springs NEW YORK 12866
Attorney of Record ARLEN L. OLSEN
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "KETTLE CHIPS" APART FROM THE MARK AS SHOWN
Type of Mark TRADEMARK
Register SUPPLEMENTAL
Live/Dead Indicator LIVE


Word Mark B BARCEL CHIP'S BY PAPAS TOREADAS FUEGO NEW LOOK KETTLE COOKED POTATO CHIPS
Registration Number 4347579
Registration Date June 4, 2013
Owner (REGISTRANT) Grupo Bimbo, S.A. B. de C.V. CORPORATION MEXICO Prolongacion Paseo De La Reforma No. 1000, Col. Pena Blanca Santa Fe Mexico City MEXICO 01210
Attorney of Record Joshua S. Frick
Prior Registrations 3770433;3783818
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "CHIPS", "PAPAS", "NEW LOOK", "KETTLE COOKED POTATO CHIPS", AND THE REPRESENTATION OF THE POTATO CHIPS AND THE LIMES APART FROM THE MARK AS SHOWN
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

Perfect! Thanks again, John.

 

[Joe N]

Just a little update:

The original owner never renewed, so the domain is now in my account.

An interesting note: the .net and .info versions of this name are still owned by the company in question and are pointing to their home page. Curious that they would let the .com expire.

Plans going forward:

• Hold for a month or two to get an idea of traffic
• Hope that original owner comes calling
• Do some outbound marketing to other companies that make this snack food, possibly letting them know who recently owned the name