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Interesting trademark case...

Tony C.
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Very interesting! Nice find, Al - thanks.

Oh, and screw Rolex for trying to bully like that.
 
Screwbacks
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why can't rolex just buy the licensed or registered name from Kiger for a good price instead of filing a case? and if rolex succeeds in buying, it can exclude kiger then from using the milsub secondary branding from its kriger diver watch. the rule is first to register and there is a proof of use. interesting how will this end up.
 
cvalue13
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A pretty interesting and thorough article.

Company’s gonna’ company. At their peril.
 
DaveK
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Interesting. As a side note, now that we have this “share” function on each post, I wonder if OF comments will see the light of day in many other areas, Instagram etc
 
janice&fred
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Interesting article but there seems to be a bit of artistic license. The author claims less than 30 Tornek Rayville dive watches are still in existence which is nonsense. Heck I could count almost half that number of them I spotted in the last 15 years in the Philippines. That's where the lion share of them were issued. There was also over a dozen of them in NOS shape that turned up in NYC a few years back.
 
140dave
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Most companies like Rolex have someone (or a department) looking at any/all TM being applied for and protesting ones like this before the TM is issued. Someone missed this one, would have been easy to fight ... like LeBron James trying to TM Taco Tuesday.
 
Archer
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140dave 140dave
Most companies like Rolex have someone (or a department) looking at any/all TM being applied for and protesting ones like this before the TM is issued. Someone missed this one, would have been easy to fight ... like LeBron James trying to TM Taco Tuesday.

Not convinced it would have been an easy fight. It would depend partly on what grounds the fight was being made.

If Rolex is going to argue that "milsub" applies exclusively to a military Submariner, rather then military submersible that has no grounds in my view.

If Rolex is going to say that "milsub" is a generic term, then they may have grounds to have this TM revoked, but then wouldn't have grounds for them to get their own TM.

It will be interesting to see how this turns out. In the end, right or wrong likely won't matter when the golden rule applies - he who has the gold, makes the rules. Rolex could tie this up and bleed the smaller company dry...let justice prevail!!
 
140dave
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Archer Archer
Not convinced it would have been an easy fight. It would depend partly on what grounds the fight was being made.

If Rolex is going to argue that "milsub" applies exclusively to a military Submariner, rather then military submersible that has no grounds in my view.

If Rolex is going to say that "milsub" is a generic term, then they may have grounds to have this TM revoked, but then wouldn't have grounds for them to get their own TM.

!
Yeah I spoke broadly but you hit it.
IMO it would have been easy to protest under generic term already in place for decades with lots to back it up like in the article. And then, yes, would have also made it nearly impossible to TM it themselves. My comment was it could have been stopped from being issued to anyone, not that Rolex had a good claim to the term.
 
Braindrain
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Didn't Rolex "take/buy" the Submariner name from another company in the 50s?

The smaller company's name escapes me, atm
 
mzinski
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This is something I find wrong with the American TM system, allowing generic names or nicknames widely used to be trademarked. If someone were savvy they would trademarking the colloquial terms and nicknames used for watches - Big Eye, Hulk, Speedy, Two Tone, Buckley, California Dial, Pie Pan, Sword Hands, Alpha Hands, etc, etc. I don't know if any of these have been trademarked but, hey, here in America, the system lets you do it. So, why not?
 
Screwbacks
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milsub is not a generic nor a dictionary word but an accepted term with a unique meaning in watch parlance. i believed as such it can be exclusively owned to whoever register it first. my 2 cents.
 
OmegaFan503
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Interesting ... Reminds me of Apple vs Cisco on the iPhone trademark
 
Walrus
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Damn when archer said they cited posts from this forum in the article I really thought I’d see a picture of my cat hairy. Definite let down.
 
Walrus
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Seems like such a non threat to Rolex in anyway way shape or form but I guess their legal team feels different. Sometimes these cases are interesting to follow. My wife is actually caught up in one right now, her name is on the patent but the company she works for owns it so she herself isn’t being sued but she had to talk to several lawyers specializing in these matters. It seems to be a common practice in the business world the lawyers told her it looks like a joke of a lawsuit that they have to fight off numerous times a year. I’m sure Rolex has a damn good team of lawyers. I think my wife just got notified yesterday her patent (not hers just her name on it) was resolved in favor of her company. I’m sure that are patent lawyers on this forum who could read better into this Rolex move
 
kanye_mouse
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Interesting find, thanks for posting. In its original request to cancel in 2019, it looks like Rolex is trying to say that its prior registration of "Submariner", and the fact that the term "Milsub" is used to refer to a Rolex Military-issued Submariner, is grounds for cancellation, since Kiger's mark basically free rides and is likely to cause confusion.

Kiger's response (from this week) says that milsub is a general term to refer to Rolex, Omega, and other military-issues submersible watches, not just Rolex. (Note that Kiger's USPTO filing includes an email from the author of the above blog post and cites him as an expert.) It'll be interesting to follow, though Rolex has a lawyer and it looks like Kiger is defending himself, so perhaps not a fair fight.
 
cvalue13
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kanye_mouse kanye_mouse
In its original request to cancel in 2019,

It’s still not 100% clear to me if Rolex is looking simply to cancel Kiger’s TM (so anyone, including Rolex, could use the term in marketing), or instead Rolex is looking to take over the TM exclusively.

And what I mean by the above is not merely what Rolex’s filings say on their face, but instead whether there is a deeper strategy in these TM cases that isn’t appreciable on the face of the filings: e.g., perhaps it’s regarded as good tactics to start by claiming “it’s mine,” to draw out a response of “it can’t be yours, everyone uses it,” before going in for the kill of “if everyone uses it, then it seems YOU can’t have the TM.”

The article appears to note that Kiger’s response (“everyone uses it”) could instead result in the TM being found too general to maintain the TM.

So here again, assuming Rolex has pretty good IP counsel, it would be great to understand the deeper strategy vs the on-paper claims.
 
Vercingetorix
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The fact this is even discussed explains why it has been 2+ years since I have bought watch I want to keep for myself.
 
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