Shelfie Kickstarter update #14 Trademark conundrum

                              

I couldn’t decide on a headline, so I am using them all:

-Why I don’t sleep at night.

-Free #Shelfie.

-Welcome to corporate America.

-Create vs. destroy.

-Money solves everything.

 

 

I have been worried about doing an update like this for a long time. I don’t remember the last time that I slept thru a whole night without waking up thinking about this.

The following text will only state the facts on what has been going on without my personal thoughts and opinions. Hopefully this will not get me into more trouble, but I have an obligation to inform my backers on everything that is going on since I am spending their money.

 

Here it goes:

I never expected things to be easy when I started my Kickstarter campaign for my bike-shelf named Shelfie.

I am not a lazy person and don’t mind working 24/7 to get things done, but when I received a notice from my attorney that a large corporation had filed an opposition and that they have been using the name Shelfie in commerce before my filing date in December of 2013, I was shocked.

I am not a stranger to trademarks and patents, I have had trademarks before and I already was in the middle of getting another patent for a different product.

I had planned everything out to the smallest detail long before my Kickstarter campaign launched in March of 2014.

Searching the internet for days to see if the name Shelfie was being used and if it was available as a trademark.

The PTO (Patent and Trademark Office) site didn’t have anybody use the mark, the domain name was taken, but nobody was using it. The internet was free of any products named the Shelfie at that point in time. Everything looked like green lights to me, so I filed for “intent of use” in December 2013 with the help of an Attorney.

The next three month was all about making videos (in the middle of a blizzard), prototypes and building the campaign page.

Before I would hit the launch button for my campaign I made another phone call to my attorney to check on the status of my trademark and was told everything looks good.

So we launched!!!

Two weeks into my campaign I get an e-mail from a fellow entrepreneur, and she claimed that she also has a product called the Shelfie and that she just started selling it online.

I immediately looked at her website, saw that her first blog post was from January 2014. (After my filing date December 2013) She was basically launching her online store at www.getashelfie.com the same time I was running my Kickstarter. I saw that her product had the name Shelfie in the mold and that this wasn’t something that could be changed very easily and would cost a lot of money. After not sleeping that night I called her up and we spoke about our dilemma.

She was clearly upset about the whole thing and I told her that basically we are both at the same point, starting up trying to make it. Who knows what the future brings and if either Shelfie will sell or even be around by next year. The one thing I knew for sure was that I didn’t want her to feel like I would go after her for using the name and instead offered that we should help each other and cross promote our products. The two Shelfies were after all in two completely different categories, hers a children’s toy and mine a bicycle accessory. So we wished each other good luck and started focusing on our own projects. http://www.getashelfie.com/blog/view/cant-we-all-just-get-along

 

Now fast forward to the last couple of days of our Kickstarter when a fellow mountain biker, business attorney and friend pointed out that somebody had filed an opposition to my trademark application and that they claimed prior use in commerce.

 

  1. Here is how the process of a trademark application works.

You first apply for either “intent of use” or, if you have product already for sale “use in commerce” with the Patent and Trademark office. If the PTO’s examining attorney raises no objections to the registration they will send you a notification that they approve the mark for publication and display it publicly for 30 days in which any opposition has to be filed.

 

And that is when the other corporation filed an opposition!!!

I immediately searched the Internet for hours to find out more about the opposing party and wanted to see this Shelfie that they were selling. I went to their website, looked all over the internet and couldn’t find any products with the name Shelfie. There was (at least in my eyes) no sign anywhere of them using a Shelfie product in commerce.

So I called up my attorney to find out what to do next.

We had to file a response and start the legal process to find out what their use in commerce was.

A couple of weeks later the opposing party submits their specimen for use in commerce, which is basically the use of the #shelfie on their Facebook page in November 2013 and therefore preceding my filling date.

At this point we had a choice, to proceed and fight for the name Shelfie or give up and change our name. Since we don’t have the money to take this all the way to trial we offered the opposing party the option where we would give up on the mark Shelfie and call ourselves bikeshelfie (oneword).

Since it still has the word Shelfie in it, we would need permission and a written agreement from them that they won’t sue us for trademark infringement.

Basically they would get what they want, which is the mark Shelfie, and I would re-brand as bikeshelfie.

 

They responded to this request with a licensing deal, were I would have to license the name from them and pay a yearly fee.

 

No bueno. Not gonna happen. RIP Shelfie trademark.

We have to move on. Even so we have not been shown any product that is called the Shelfie by the opposition, we are going to do the financially responsible thing and are giving up on the name. We rather invest the money into custom reusable shopping bags for packaging than going to trial. This product is after all about design and function.

Even so we really liked the name it is not worth going into debt for.

 

Now this is where I am asking you guys to help me discover a new name for this thing that everybody loves.

Let’s make it even better than the old name and show how every negative action can be turned into a positive reaction.

 

You can submit your name idea either via Kickstarter message, e-mail, Facebook, twitter or Instagram. We will create a list with the best names and take a survey on Facebook to find our new name. This will be the first crowd-sourced naming of a crowd-funded project.

Are you angry, mad and upset? Call me.

If you have any questions about our trademark issue please give me a call. phone # 845-750-6667

Looking forward to hearing from you.

 

Thank you for all of the support

Jurgen


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