Repro Labels

[Superfluous]

Many jacket repro manufacturers affix labels to their jackets that are reproductions of the original labels used by the manufacturers of the original jackets. Unsophisticated/uninformed consumers might be misled to believe that, given the reproduction label, the subject jacket was manufactured by the company set forth on the label, rather than a different company reproducing the original label. We all know that one cannot manufacture a replica of a Louis Vuitton purse and place a Louis Vuitton label inside the purse. Such counterfeit products subject the manufacturer to both civil and criminal penalties. So why then can a leather jacket manufacturer produce a jacket that looks nearly identical to one made by a different company, and place the label of the different company inside the jacket? Why is that not tantamount to counterfeiting a Louis Vuitton purse?

I did a little research to see if I could figure it out. Let me state upfront that I am not an intellectual property attorney, nor an expert on the subject, and the following observations are anything but authoritative. Moreover, I apologize in advance if this is common knowledge and I am the only moron who was not aware of this information.

According to the United States Department of Justice:

“In order to show that a trademark used by the defendant was a ‘counterfeit mark’ the government must prove the following:

A. The mark is spurious. 18 U.S.C. § 2320(d)(1)(a). A mark is ‘spurious’ if it is ‘not genuine or authentic.’ Joint Statement on Trademark Counterfeiting Legislation, 130 Cong. Rec. H12076, H12078 (daily ed. Oct. 10, 1984)(hereinafter ‘Joint Statement’).

B. The mark was used in connection with trafficking in goods or services. 18 U.S.C. § 2320(d)(1)(A)(i).

C. The mark is ‘identical with, or substantially indistinguishable from’ the genuine trademark. 18 U.S.C. § 2320 (d)(1)(a)(ii). . . . .

D. The genuine mark is registered on the principal register in the United States Patent and Trademark Office. 18 U.S.C. § 2320(d)(1)(A)(ii). . . . .

E. The genuine mark is in use. The genuine mark must not only be registered, it must also be in use. 18 U.S.C. § 2320(d)(1)(A)(ii).

F. The goods or services are those for which the genuine mark is registered. 18 U.S.C. § 2320(d)(1)(A)(ii). . . . .

G. The use of counterfeit mark is ‘likely to cause confusion, to cause the mistake, or to deceive.’ 18 U.S.C. § 2320(d)(1)(iii)."

http://www.justice.gov/usao/eousa/foia_reading_room/usam/title9/crm01715.htm ; see also, http://www.justice.gov/usao/eousa/foia_reading_room/usam/title9/crm01709.htm , http://www.law.cornell.edu/uscode/text/18/2320 .

Elements A, B, C, D and F are generally present with respect to the labels used by repro jacket manufacturers. Element G – likelihood of confusion – is a fact specific analysis but, as stated upfront, I suspect that many consumers would indeed be confused by repro jackets with repro labels, and assume the original company listed on the label made the jacket.

For purposes of repro jackets, Element E appears to be the key issue. Most of the repro labels I have seen are for companies that ceased operations long ago. Therefore, the original mark is no longer in use. It appears that, if the original mark is no longer in use, Element E is not present and anyone may use the mark with impunity (I say “it appears” because I may be wrong and there may be additional considerations I have not addressed).

The foregoing explains why repro manufacturers use labels for Monarch Mfg. Co., J.A. Dubow Mfg. Co., Rough Wear Clothing Company, California Sportswear Co., H & L Block, Arco Leather, etc. As best I can tell, these companies no longer produce leather jackets incorporating their original labels/marks (most of these company no longer exist) and, therefore, present day jacket manufacturers may freely use the prior labels/marks. At least one manufacturer uses the Sears Hercules label, even though Sears still exists. However, Sears ceased using the Hercules mark in 1965: http://www.searsarchives.com/brands/hercules.htm.

Buco is the one label/mark that does not, at first glance, comport with the foregoing explanation. Several companies use Buco labels. However, Buco appears to continue to use the mark itself: http://bucousa.com/ . If Buco were still using its mark to sell its own leather jackets (and the other above-stated requirements were satisfied), I suspect that other companies would not be permitted to lawfully use Buco labels without paying Buco a licensing fee. That said, further inquiry suggests that the above-listed Buco website may be illegitimate and may not reflect the continued use of the Buco mark by Buco. For example, the address set forth on the website – 4000 West Sunset Boulevard – is not a real address and the company is not housed there. Moreover, the company does not answer its telephone, nor respond to e-mail inquires. The same illegitimate address and telephone number are used by a company named Johnson Motors: http://johnsonmotorsinc.com/ . However, Johnson Motors does not offer Buco products for sale. Moreover, Johnson Motor's Yelp listing sets forth a different address in Pasadena, far away from the bogus Sunset Blvd. address: http://www.yelp.com/biz/johnson-motors-pasadena . So, is Buco continuing to offer jackets for sale with its original mark/label? That is far from clear and, IMHO, appears unlikely. This may explain why certain present day repro manufacturers believe the Buco mark is fair game.

Again, these are the musings of an uninformed dolt and not to be relied upon.

Ps: For any experts on the subject: Can a subsequent company acquire exclusive trademark rights in a mark that was abandoned by the original creator/registrant years early; in other words, can a new repro jacket manufacturer acquire exclusive rights to a mark for a defunct company, and thereby prevent other current manufacturers from using the mark, even though the new jacket manufacturer was not the original creator and registrant of the mark?

 

[schitzo]

I have wondered about this myself once or twice, and then forgot about it. I suspect the people who could answer are probably too busy making jackets. You know, like the as yet unrevealed one that you just acquired.. hint hint. Does that have a repro label?

 

[Sloan1874]

Edward's your man on this, he's a intellectual property lawyer/academic.

 

[zhz]

I think this is why no one can use Aero label on repro A2, apart form Aeroleather and GW.
From what I've heard, those manufacturer using Buco label paid a lot money for it, like Real Mccoy.

 

[Edward]

Trade Mark law is a complicated beast and varies from territory to territory. That said, the big picture overview is that it comes down to ownership of the mark. Whether Registered or not (different protections - as a rule, registered marks are always stronger, but it can be expensive to do so, has to be kept up, and bad faith registrations - i.e. registrations made to prevent others using the mark, with no actual trade usage - will be disallowed by courts), the general principles are:

- you need to actually be using a mark for it to have value - you can't just own it and sit on it, unused (though usage can include licensing it to be used by others).

- other people can't just turn around and use the mark as they like, but as the owner you can licence them to do so. This is what's going on with Buco - the current owners are licensing repro companies to use the Buco labels in their repros - Aero are one such company doing this - a recent thing, I think. Murray showed me a beautiful Buco repro model in the factory - the one that's a bit more like a Perfecto, no D pocket but no coin pocket either... Lovely piece. In turn, Aero have also licensed their mark to be used by John for some of his Goodwears, while they prevented ELC from so doing years ago. Logical business move: ELC are a direct competitor, whereas John's jackets appeal to a very different customer base, and so rather than facilitating a competitior, they're creating an income stream. FWIW, using a competitor's valid TM in advertising your own can also be an infringement - e.g. an eBay sale of a jacket copying a Lewis using "Like Lewis" or "Lewis copy" or such in the title of the auction would be infringing the Lewis mark (at least here in Europe) as it is a direct attempt to glom off the Lewis brand in order to sell its own product, despite the fact that no attempt is being made to pass the jacket off as the genuine article.

On the matter of 'reviving' an old brand.... Trademarks have to be sufficiently unique, so anything that has become a generic term won't be allowed. A brand which existed in the past but still has that unqiueness can be revived - that's what Ken successfully did with "Aero". It's also been done in other markets - for example, the "Mosrite of California" (RTM) guitars made in Japan these days are sold under a trade mark that had fallen into disuse, and under TM law they were simply able to pick it up and use it. (Japanese law is, I am informed, much more generous in this respect, but nonetheless their mark is still valid internationally).

Anyone using a mark such as Buco or Aero under licence from the TM owner breaks no law in applying to the jacket, however, anyone who then attempts knowingly to sell that jacket as a Buco / Aero / et cetera, whether manufacturer, retailer, or subsequent private, second-hand seller, commits a criminal fraud. This is why repro companies will typically apply their own label somewhere discreet, like in the pocket. Far from failproof, but it at least gives them some 'good faith' protection to keep them right should someone attempt to sell it fraudulently as per the main label.

 

[Monitor]

Interesting! I always did wonder how so that the Aero and RMC can use the Buco tag but I figured it's because the company is no more...

Though now I would really like to know what's the story behind the bucousa dot com website.

 

[Superfluous]

Edward, thanks for the explanation. I did not know that mere continued licensing of a mark, without any concurrent product offerings by the owner, qualifies as "use" so as to maintain the mark. That is interesting and explains how the owner of the Buco mark may maintain its rights notwithstanding the apparent lack of current products for sale. I knew that RMC acquired a license for the Buco label (I have seen it reported that RMC actually purchased the TM outright, but I think RMC only acquired a license). I did not know that Aero also acquired a license, but that makes sense given that the mark is being maintained by someone. This, of course, means that anyone else using Buco labels also has obtained, or should obtain, a license (I ain't mentioning names).

Monitor, I too am curious about the Bucousa website. I tried to contact them many moons ago, but to no avail. The non-existent address is curious. The overlapping Johnson Motors operation -- which actually operates from a different address and does not offer Buco products -- is also curious. That said, there must be someone out there -- perhaps unaffiliated with the questionable Bucousa website -- that legitimately owns the Buco mark and has licensed it to RMC and Aero.

 

[rocketeer]

I asked a similar question many years ago, may have been here but maybe another site.
A2s are typical of this: Most A2s come with a label that states "Property, Air Force, US Army". I dont know if any were ever sold by the military so could they theoretically ask for their property back and get it back if necessary though the courts. After all, unless you have an invoice or sales document could the jacket be considered stolen property?
J

 

[Edward]

Really the use qualification is about making sure that if someone comes to court howling infringement, there is a legitimate business to be harmed; prevents all sorts of psychos and loonies from registering marks and then trying to obstruct other peoples' businesses for spurious purposes.

 

[Superfluous]

Edward: aka trademark squatters.

 

[Stearmen]

What about companies that have been gone for over 60 years? Say Monarch Mfg. Co., Perry Sportswear, Poughkeepsie Leather Coat Company, United Sheeplined, Bronco MFG. Co., Werber Sportswear, or Cable Raincoat Co.?

 

[Superfluous]

^ Their labels are fair game for reproduction by present day jacket manufacturers.

 

[zhz]

Interesting one, and it makes me wonder is it legal to sell the original jackets if these jackets belong to US Army?

I asked a similar question many years ago, may have been here but maybe another site.
A2s are typical of this: Most A2s come with a label that states "Property, Air Force, US Army". I dont know if any were ever sold by the military so could they theoretically ask for their property back and get it back if necessary though the courts. After all, unless you have an invoice or sales document could the jacket be considered stolen property?
J

 

[Edward]

In theory, I suppose the USAF / USA could do that, though in all likelihood they would see it as politically damaging. In any case, given what it would likely cost to retrieve something that to them would be of so little value for the most part.... I don't think any collector need ever worry.

Edward: aka trademark squatters.

Exactly. This was particularly an issue in the early days of the web, with some getting stiff penalties from the courts for it.

 

[Superfluous]

Exactly. This was particularly an issue in the early days of the web, with some getting stiff penalties from the courts for it.

Trademark squatting continues to be a big problem in China, where many Western companies have only recently entered the market and discovered that their name has been spuriously trademarked by a squatter who has never put the trademark to use, but nevertheless attempts to extort a hefty sum to relinquish the TM.

 

[Justhandguns]

Trademark squatting continues to be a big problem in China, where many Western companies have only recently entered the market and discovered that their name has been spuriously trademarked by a squatter who has never put the trademark to use, but nevertheless attempts to extort a hefty sum to relinquish the TM.

Well, China of course is a serious problem, especially with their own trademark laws. That reminds me of the time when people went on to registered some popular domain names and then sell them off to companies.

As for defunct companies, there is really no harm done I guess.

 

[Edward]

Yes, cybersquatting was big in the US and Europe in early web days. Since joining the WTO China has been encouraged to make progress in address widespread intellectul propoerty infringement, but there's a long way to go.

 

[aswatland]

What about companies that have been gone for over 60 years? Say Monarch Mfg. Co., Perry Sportswear, Poughkeepsie Leather Coat Company, United Sheeplined, Bronco MFG. Co., Werber Sportswear, or Cable Raincoat Co.?

These labels are carefully reproduced and used by Good Wear for example.

 

[Stearmen]

These labels are carefully reproduced and used by Good Wear for example.

That didn't answer my question. He did not buy the trademark rights. I thought J.A. Dubow was owned by Lost Worlds. I am sure Willis & Geiger is owned by some one!

 

[Edward]

If someone else legitimately holds the mark and has not given permission, it would potentially be sn infringement. TMs are, however, a matter of civil law and as such it is up to the mark holder to intiate enforcement. If they let it go long enough, they will lose the right to exclusive use of the mark.