According to Chicagobreakingbusiness.com Sears has filed a suit against the company who registered the domain DieHardSpray.com, which is being used “in connection with a ‘numbing agent for male genitalia,’”
The suit alleges that the domain registration and use has “diminished, blurred, and tarnished, and will likely continue to diminish, blur, and tarnish Sears famous DieHard marks.”
“For example, defendants’ advertisements on their website have shown a partially naked woman laying on top of the word DieHard,” the suit states.”
Of course Die Hard is a trademark Sears has used for years in connection to its car batteries.
Sears, is asking the court to order the “domain owner to end its use of the DieHardspray.com domain name, turn over the domain name and pay damages and the cost of an ad campaign to correct any damage to the DieHard brand reputation.”
It does not look like Bruce Willis or anyone in connection with the “Die Hard” series of movies has been named nor does it seem that Sears had any problem with that use.
Guess those movies did the brand proud.
TM’s are a real joke sometimes, if its not been used for batteries then what the hell has it got to do with Sears?
I suppose Sears invented the term ” Die Hard” in the english language, way back as early as 1915 … apparently. 😉
Chancers
“Guess those movies did the brand proud.”
@Gazzip
The point of a trademark is that the owner can oversee/dictate it’s use in commerce. A trademark holder is not compelled to enforce every potential infringement. And yes, the TM office did determine Sears invented the phrase “Die Hard” with regards to commerce. Before Sears the two words together had no meaning as related to the sale of any product including batteries or sprays. Few TM holders invented their words. It is application of the word/words in commerce, generally related to first use. ie- McDonald’s Hamburgers, American Airlines. It is also not like die hard has this automatic, common sense, relation to erections. Perhaps if it was a life-support system one could see a fight. As I was reading the post I assumed die hard spray was a anti-corrosive battery spray when I first saw the term.
Saying a TM holder cannot choose when to enforce their TM is like saying a domain holder cannot dictate the sale price of their domain because there is no consistent benchmark for domain valuations or every domain with equal monthly searches and cpc has to be the same price. According to uspto.gov, Die Hard was first used in commerce in 1967. Those words belong to Sears and they can enforce it at will as related to commerce. MotorcycleHelmets.com belongs to MHB, he can ask whatever price he wants for it. ICANN and a registrar issued the domain, uspto issued the TM and as I tell my kids, “life isn’t fair.”
I love this domain-game, but have TM’s too. Every case is different it appears.
The jokes write themselves today….lol. Bet they’re selling a lot of DieHardSpray this week!
BFitz, seems you think Sears is on solid ground here. Unfortunately their chances here are slim to none and slim left town an hour ago. They do not have a monopoly on the use of the words die+hard in commerce or anywhere else in the world. DieHard the movie is proof of that. With respect to your comment that they do not have to enforce every potential infringement the fact is that TM holders are on call to police and protect their tm and failure to do so can result in cancellation of same.
“The point of a trademark is that the owner can oversee/dictate it’s use in commerce.”
Although Trademarks are/can be very complicated to understand I’d say they that they can’t “dictate it’s use” in commerce unless they state its use when appying for a TM.
More than one person can hold a Trade Mark on the same term if it has been granted for different uses in commerce.
If its being used for something else other than what it says in the TM then whats the problem ?
Below is Sears DieHard TM
Goods and Services
IC 009. US 021 023 026 036 038. G & S: Batteries, namely, batteries for vehicles, motorcycles, tractors, wheel chairs, marine equipment, namely, boats; alkaline and electric batteries; and booster cables. FIRST USE: 19670719. FIRST USE IN COMMERCE: 19670719
I don’t see anything to do with any form of sex spray super stiffy type application in there.
There’s loads of Trade Marks not owned by Sears for the word/s DieHard
eg:
Word Mark DIEHARD
Goods and Services IC 009. US 021 023 026 036 038. G & S: Sunglasses, goggles for sports, safety goggles, motorcycle goggles, ski goggles, snow goggles, swim goggles, protective helmets, sports helmets, safety helmets, riding helmets, motorcycle helmets, bicycle helmets
IC 014. US 002 027 028 050. G & S: watches, jewelry
IC 018. US 001 002 003 022 041. G & S: Wallets, backpacks, duffle bags, tote bags, messenger bags, computer bags, luggage, suitcases
IC 025. US 022 039. G & S: Apparel, namely, pants, jeans, leggings, capris, shorts, skorts, skirts, bottoms, tops, shirts, t-shirts, tank tops, vests, knit tops, sweaters, cardigans, coats, jackets, head wear, hats, headbands, ear bands, ear muffs, scarves, gloves, mittens, fleece tops, underwear, thermal underwear, boxer briefs, socks, loungewear, pajamas, sleep pants, sleep shirts, robes, boxer shorts, fleece bottoms, hooded sweatshirts, sweatshirts, sweatpants, wind pants, wind jackets, yoga pants, yoga shirts and athletic wear, namely, pants, capris, shorts, tank tops, shirts; footwear
———————————–
“According to uspto.gov, Die Hard was first used in commerce in 1967. Those words belong to Sears and they can enforce it at will as related to commerce.”
I’m pretty sure its not as straight forward as that, they have to take its use into account.
It would be nice to hear from someone who fully understands trademark law.
MHB perhaps ?
Man. Seems like it gets harder to die every year.
If you are DEAD why do you care if you were hard……….?
I think these must be the same guys selling Michealjacksondead.com
🙂
@ Gazzip
“Below is Sears DieHard TM
Goods and Services
IC 009. US 021 023 026 036 038. G & S: Batteries, namely, batteries for vehicles, motorcycles, tractors, wheel chairs, marine equipment, namely, boats; alkaline and electric batteries; and booster cables. FIRST USE: 19670719. FIRST USE IN COMMERCE: 19670719”
Batteries, marine equipment…so long as the defendant doesn’t bring out a ‘die hard vibrator’, there doesn’t seem much cross over in classes 🙂
the problem is when you have a tm you cannot add a word to create another trademark..thats what happened here the word spray was added to the trademark diehard.
this new word dilutes, diminishes,tarnishes the orginal tm diehard and the owner who invented,registered and used their tm in commerce took action to protect their ip.ie sears
other senior registered uses of diehard only validate the problem this new term is creating a likelihood of confusion with superior registered marks.
the owner of diehardspray.com will terminate their use,relenquish their domain,the sooner the less it will cost the owner of diehardspray.com in legal fees and penalities.
the owner of diehardspray is in a precarious postion with liability.
and the commets on this board only enforce the addage a little bit of knowledge is dangerous.