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Firing Back Against Cold Steel San Mai "Trademark"


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All:

 

I have engaged with a patent attorney about the Cold Steel letters sent to smiths threatening them to stop using the term "san mai" because it's a registered trademark of Cold Steel. This sort of corporate bullying pisses me off. (see this thread if you're not familiar with this discussion: http://www.bladesmithsforum.com/index.php?showtopic=33426)

 

It's clear from my initial conversation with the attorney that Cold Steel cannot use a wordmark claim to intimidate small business owners with the intent to limit competition. They own the word mark with the stylized graphic element (which no one has used). They don't own the words or the technique.

 

I'm asking for your help in the following ways:

 

1: If you've received a letter from Cold Steel, could you scan it and send it to me? Don't worry, the attorney will not say he is representing you, and you can't get in trouble for just sharing a letter.

 

2: It would be helpful to have a number of references to "san mai" to use as an examples when we send the package to the patent and trademark office. So, if you have any books that reference san mai--especially books that pre-date Cold Steels registration of the trademark--it would be a real help if you could send me the reference and a quote (need name of book, year of publication, publisher, author, and page on which quote appears).

 

I appreciate your help. I will post a copy of the letters sent by the attorney here when they are done.

 

Dave

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Here is a link to the USPTO record of the filing. It shows the stylized word mark that has been trade marked. Interestingly, there are several companies who have trademarked various versions for other non-blade markets.

 

http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4808:ttnv9k.2.3

 

Edit:

They have another version:

http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4808:ttnv9k.2.4

Edited by Brian Dougherty
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Right on. Jim Hrisoulas mentioned in the previous thread that he had pre 1970 books referencing San-Mai, so maybe contact him.
Does this mean no coordinated spam tidal wave...?

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I wish I were prolific and well known enough for them to bother with me,Currently all my blades are Ichi Mai, but I'd be all in or the fight. Get em Dave.

Edited by Johnathan Sibley
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Johnathan, if you send me your mailing address i can harrass you via mail if you feel left out! Ill forward the bill collectors your way!

 

 

**** FYI dont piss dave off :o

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Go Dave! You rock.

 

Trademarking 'san mai', that's ridiculous. By the way...from now on my blades will be produced by a special, patented treatment, "Quench Hardening ™", which can be licensed for a "small" fee; you can all send the checks to... :lol: :lol: :lol:

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Dave, can't say how much I appreciate you bringing the good fight forward about this. I hate when people think they can do whatever they want because they have more money and larger name recognition. Although I don't expect to be receiving any nasty letters in the mail, I think this is the perfect opportunity to start making more san mai...

 

John

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This is a disingenuous apology at best. You'll note that while he's falling all over himself to apologize, he doesn't acknowledge he's done anything wrong.

 

"All I am guilty of is following the rule of law and making people aware of Cold Steel’s ownership of this trademark, and asking people to respect it.

A few individuals are trying to say that there are no rights attached to this name, and that is incorrect. Anyone who chooses to associate any name with their knife faces the same choice that I do. They are free to promote the name of their choice, invest in it and enjoy the fruits of their labor (defending it if required), or face the fate of individuals like Mr. Michael Walker, who once owned a US trademark registration for LinerLock but then failed to defend it when it was challenged. I myself used the name Liner Lock in the past, not knowing that Mr. Walker owned the trademark, but after a very similar letter from Mr. Walker I changed my marketing material and used the term Leaf Spring Lock out of respect for his rights. I admire Mr. Walker and would never knowingly infringe on his trademark rights. Our situations are not dissimilar."

 

1- He implies that "following the rule of law" somehow coerces him to make these threats to bladesmiths. It does not.

 

2- He does not walk back the claim that he owns "san mai," or attempt to clarify that what cold steel really owns is the word mark, not the words.

 

3- His comparison to Walker's LinerLock trademark is absurd on its face. If LinerLock blades had been around for hundreds of years, created in multiple cultures/time periods, and referred to as LinerLock by generations of smiths . . . then it would be an apt comparison. Apples to bazookas. The guy needs a course in logical fallacies (or perhaps he is aware he is committing false equivalency and is doing so on purpose?)

 

You'll also note that while tons of books, magazines, etc. have used san mai to describe blades pictured in them, he has chosen to launch these letters at small, independent bladesmiths and not those with the means to lawyer up. His hand wringing, whining apology "I didn't threaten anyone" is bullshit. The letter is an exercise in weasel words, where he implies legal action, but avoids clear language so he can deny it later. The man should run for political office.

 

This is abuse of power.

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If my understanding of the rule of law is correct, anyone could send him a cease and desist letter to take down the open letter since it improperly claims that "SAN MAI" is a registered trademark in itself.

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I have just patented a 4" skinner I call "the Bowie".

 

Please don't use that name anymore or I'll be forced to sue.

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Dave, please tell us how you really feel....... :D

 

This statement gives me an idea: "You'll also note that while tons of books, magazines, etc. have used san mai to describe blades pictured in them, he has chosen to launch these letters at small, independent bladesmiths and not those with the means to lawyer up."

 

If you, we, your attorney, could pull some magazine articles from prominent publications (Blade, Knife Digest, etc.) that used the term "San Mai" in the publications, and Cold Steel did not "vigorously defend" their "Trademark" of this name, then that might just be grounds to have the U.S. Trademark Office rescind said Trademark.

I am also curious about the repeated claim that the U.S. Trademark Office "then recognized it as incontestable in 2014", What is that referring to? Anybody know? Is there a previous effort to rescind the WordMark of SAN MAI from Cold Steel?

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my curiosity on incontestability was piqued, and here is a little something I learned. Incontestability means that your Trademark cannot be challenged except under these special conditions:

 

Section 33 of the Lanham Act, 15 U.S.C. § 1115, enumerates several defenses to incontestability in the United States. These include fraudulent registration, abandonment, misuse of the mark to misrepresent the source of goods and services, and that the mark is functional. In addition, U.S. courts are split as to the weight that should be accorded an incontestable registration when examining the strength of a mark for purposes of determining likelihood of confusion. Some courts have treated incontestability as an indication of strength, while others have held that it is relevant only to the validity of the registration and not as a measure on the distinctiveness continuum.

Edited by Timothy Artymko
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I have learn so much from this!

Most important...Pissing off bladesmiths is worse than kicking a hornets nest!

 

Thank gods I am one of the hornets in this one.

 

-Gabriel

 

BTW... his lame apology reminds me of the same lame apology a wife abuser gives," Sorry honey, but when I put my fist up you should know better than to make me angry!"

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My favorite part of the "apology" letter is where he admits when he chose to call the steel san mai it was because he thought it was a cool term. So it isn't even actual san mai steel! Sounds like fraudulent advertising to me...

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Indeed! If it ain't got three layers, it ain't san mai (sorry...SAN MAI, lol). Even worse than trademarking an established term, is getting the meaning wrong... :blink:

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Blurry pic, but the following is an illustration of San Mai (clearly labeled as such) in a 1989 book published in German.

 

The trademark of Cold Steel is dated 2008, despite his claim that he's had it for 30 years.

 

Any other examples from older books would be helpful, guys.

 

THanks,

 

Dave

 

 

IMG_3793.JPG

IMG_3794.JPG

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