to my mind comes as well the artist formerly known as Prince
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Piaggio .... what the ...?!
- Thread starter janguzzi
- Start date
He would be banned from using that name because there is a company that makes bacon called Prince.
He would have to go by the name of Prince Rogers Nelson.
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According to my attorney, Trademark law makes it so that you cannot represent yourself as the "trademarked" brand to sell goods (representing yourself as them) in a similar market. Oddly enough if I made (say) jewelry, they would have no case at all. GuzziTech is a Forum. There are laws protecting the end user for websites such as this one. It's a shitty move to send a Cease and Desist to a Forum. Just costing me a big handful of $, of which they lost my V100 sale, and likely any new Guzzi from here on out.
Well...
It's not "just a forum" though. You use it as a "funnel" to drive sales into your TWO "For Profit" Businesses. In fact, the commercial sides of your buisinesses, both have links from your forum as well as numerous references as such.
I'm not complaining nor trying to say that it's wrong to have profitable businesses.
I'm simply pointing out that the name "Guzzi" in this context, and with regard to your use of the name, and others like HMB, is that you use the word "Guzzi" in commercial for profit business(es) directly related to Moto Guzzi motorcycles and this in and of itself, absolutely gives Moto Guzzi, an ironclad platform to engage anybody (yourself included) who is using their name in this way, in a legal punitive action.
If they want to push it, they will prevail. I assure you.
With all due respect, your Trademark attorney is dead wrong and giving you very poor advice in my estimation.
Examples:
WWF vs WWF
When wrestling company Titan Sports changed its name to the World Wrestling Federation it was drawn into a legal fight with another WWF, the World Wildlife Fund, that lasted 13 years. The conservation charity took action to protect its brand from what it described as an “unsavoury” connection with wrestling, and, in 2001 a court in London ruled in its favour. Not one to take a beating lying down, the World Wrestling Federation challenged the ruling, and, after that was dismissed, it threatened to appeal. The wrestlers eventually gave in and spent millions rebranding to World Wrestling Entertainment, WWE. It also used the line “Get The ‘F’ Out” as a marketing slogan. After the World Wildlife Fund’s victory, a spokesman for the charity said: “It’s been the wrestlers against a cute little panda bear. And the panda won.
Instagram v LitterGram
Combating Britain’s litter problem was Danny Lucas’s goal when he founded LitterGram, an app that encourages users to share and geotag pictures of litter they see on the streets and report it to their local council. However, his app came to the attention of lawyers for Instagram and its owner Facebook who told him in September to change the name or face a lawsuit. They argue the use of “gram” in the title could undermine the world’s most famous photo-sharing site’s brand. Lucas says: “They’ve said ‘change your name’ and they’ve given us deadlines which have come and gone. We make an appeal and they don’t respond.” He has delivered a public plea to Facebook founder Mark Zuckerberg claiming the “unreasonable demands that we rebrand will kill our momentum”, and last month it was announced that Instagram had dropped the case.
Facebook takes brand protection seriously, as evidenced by a previous wrangle it had with a teacher’s community website in the US called Teachbook in 2010 for using the word “book” in its name. In the end Facebook agreed to drop its trademark suit after the group changed its name to TeachQuest.
Starbucks v Sambucks
Starbucks has not been one to shy away from trademark battles with considerably smaller adversaries. The world’s largest coffee chain once went after a restaurant in British Columbia because it was called HaidaBucks and took a Texan bar owner to court over a beer he brewed and sold named Star Bock. Sam Buck Lundberg, a coffee shop owner in the small town of Astoria in Oregon, didn’t have long to wait for her Starbucks order when she used her name to brand her shop “Sambucks”. Starbucks sent her a cease and desist letter and reportedly offered her $500 (£400) to rebrand, but when she didn’t comply the case went to court. In 2005, a judge ruled in favour of the coffee giant, ordering her to drop the name “Buck” from everything in her store, including the coffee cups and the front window. Lundberg’s verdict? After the ruling she told ABC News: “People think this is a crock of crap.” "
It's not "just a forum" though. You use it as a "funnel" to drive sales into your TWO "For Profit" Businesses. In fact, the commercial sides of your buisinesses, both have links from your forum as well as numerous references as such.
I'm not complaining nor trying to say that it's wrong to have profitable businesses.
I'm simply pointing out that the name "Guzzi" in this context, and with regard to your use of the name, and others like HMB, is that you use the word "Guzzi" in commercial for profit business(es) directly related to Moto Guzzi motorcycles and this in and of itself, absolutely gives Moto Guzzi, an ironclad platform to engage anybody (yourself included) who is using their name in this way, in a legal punitive action.
If they want to push it, they will prevail. I assure you.
With all due respect, your Trademark attorney is dead wrong and giving you very poor advice in my estimation.
Examples:
"Marvel and DC Comics Control of 'Superhero'
The term "superhero" is trademarked by two companies: DC Comics and Marvel Comics. Each pursues aggressive legal action when other comic book publishers use this term. Critics of the practice have denounced these companies as trademark bullies, but other publishers have not yet contested their ownership of the term. Others think that the value of the trademark is not worth the hostility from independent publishers and the expense of lawsuits.Apple Corps v. Apple Inc.
Two major institutions have battled over the trademark "apple" for decades. The Beatles founded the Apple Corps music company eight years before Apple Inc. was founded by Steve Jobs. When the latter was first sued by the Beatles, Jobs agreed not to enter the music business and paid a cash settlement. However, Apple Inc. was sued again after it introduced iTunes. That lawsuit was resolved when Jobs agreed to purchase the trademark rights from Apple Corps and then sublet them back.Washington Redskins
This NFL team lost their team name trademark recently after the USPTO ruled that the name was insensitive to Native Americans. As a result, the team can no longer sue those who create and sell counterfeit Redskins merchandise. The Redskins organization has appealed. Those considering a trademark should extensively research the history of the word or phrase to ensure they won't need to change it later.WWF vs WWF
When wrestling company Titan Sports changed its name to the World Wrestling Federation it was drawn into a legal fight with another WWF, the World Wildlife Fund, that lasted 13 years. The conservation charity took action to protect its brand from what it described as an “unsavoury” connection with wrestling, and, in 2001 a court in London ruled in its favour. Not one to take a beating lying down, the World Wrestling Federation challenged the ruling, and, after that was dismissed, it threatened to appeal. The wrestlers eventually gave in and spent millions rebranding to World Wrestling Entertainment, WWE. It also used the line “Get The ‘F’ Out” as a marketing slogan. After the World Wildlife Fund’s victory, a spokesman for the charity said: “It’s been the wrestlers against a cute little panda bear. And the panda won.
Instagram v LitterGram
Combating Britain’s litter problem was Danny Lucas’s goal when he founded LitterGram, an app that encourages users to share and geotag pictures of litter they see on the streets and report it to their local council. However, his app came to the attention of lawyers for Instagram and its owner Facebook who told him in September to change the name or face a lawsuit. They argue the use of “gram” in the title could undermine the world’s most famous photo-sharing site’s brand. Lucas says: “They’ve said ‘change your name’ and they’ve given us deadlines which have come and gone. We make an appeal and they don’t respond.” He has delivered a public plea to Facebook founder Mark Zuckerberg claiming the “unreasonable demands that we rebrand will kill our momentum”, and last month it was announced that Instagram had dropped the case.
Facebook takes brand protection seriously, as evidenced by a previous wrangle it had with a teacher’s community website in the US called Teachbook in 2010 for using the word “book” in its name. In the end Facebook agreed to drop its trademark suit after the group changed its name to TeachQuest.
Starbucks v Sambucks
Starbucks has not been one to shy away from trademark battles with considerably smaller adversaries. The world’s largest coffee chain once went after a restaurant in British Columbia because it was called HaidaBucks and took a Texan bar owner to court over a beer he brewed and sold named Star Bock. Sam Buck Lundberg, a coffee shop owner in the small town of Astoria in Oregon, didn’t have long to wait for her Starbucks order when she used her name to brand her shop “Sambucks”. Starbucks sent her a cease and desist letter and reportedly offered her $500 (£400) to rebrand, but when she didn’t comply the case went to court. In 2005, a judge ruled in favour of the coffee giant, ordering her to drop the name “Buck” from everything in her store, including the coffee cups and the front window. Lundberg’s verdict? After the ruling she told ABC News: “People think this is a crock of crap.” "
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Nate McD
Just got it firing!
Fair Use Defense: When Can You Use Another Owner's Trademark Without Permission?
By law, you need not request permission to use a trademark belonging to another if it is for an editorial or informational use.
www.nolo.com
Bill Meyer
Cruisin' Guzzisti
Lord, please deliver us from corporate jerk-offs with nothing else to do.
I hope that I am 100% wrong. I truly do.
Strange that Moto Guzzi is going after anyone using the name "Guzzi" in their title. Even BMW doesn't do this, although they did go after clubs using their symbol. Having the mark name in the title, such as BMW Owners of America, does promote the brand.
If they push back again. I'll just pull the plug on the Forum here.
They (Piaggio & Co. SpA.) are actually obligated to defend their trademark against any and all usurpers. It's part of the Dealer Agreement.
Agreed John, thanks. Twenty plus years of helping owners here, and more frustrating that I've watched other Clubs (MGNOC) and other brands Forum owners get celebrated for their help to promote.
I hope that it doesn't come to that. Truly.
Please don't pull the plug, just change the name if you have too. Too much valuable information here to lose. Call it GTM forum if you have to.
Absolutely agree. Please do not close it.
kildareman
Cruisin' Guzzisti
You could probably go guzz-i-tech or some such. Watch them tie themselves in knots over that. Looking at the trademark filing it's for "Moto Guzzi" so I can't see where their problem is tbh. Then again there are greater minds
I can understand the frustration. I know it's not the greatest thing. However... What I cannot understand, is the desire of so many here who want to brow beat Piaggio and Moto Guzzi for protecting what is theirs.
I mean come on...
If people want respect for that which they have built and own, exactly like this REGISTERED TRADEMARK:
Then you have to honor Piaggio and Moto Guzzi for wanting the same respect. They are doing NOTHING wrong by asserting their rights under the law. Not a damn thing.
Anything less, is just hypocrisy.
I know that this isn't all "touchy feely" wonderful, but it is what it is and acting like what they are doing to protect their intellectual property and trademark, is bad, is just disingenuous.
I mean come on...
If people want respect for that which they have built and own, exactly like this REGISTERED TRADEMARK:
GTM®
Then you have to honor Piaggio and Moto Guzzi for wanting the same respect. They are doing NOTHING wrong by asserting their rights under the law. Not a damn thing.
Anything less, is just hypocrisy.
I know that this isn't all "touchy feely" wonderful, but it is what it is and acting like what they are doing to protect their intellectual property and trademark, is bad, is just disingenuous.
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GoozziTech A forum for lovers of Motor Goozzi motorcycles.
Scott, love ya man, but here's where things get blurred for me. To start: You have BMW MOA that is still alive and well, as well as Moto Guzzi National Owners Club, unless they take that one down too. There's several other Forums using Guzzi in the name selling memberships, farkles and Ads to truly profit from. Unlike them, GuzziTech was founded as a "Owner Tips and Tricks" website as launched/shown HERE -- which this site still is. Do I link from here, sure, as do all of the others.
Additionally, I’ve spent a great deal of money and time launching my new trademarked business as GT MotoCycles (which is a completely separate business and website). I think there are many sites they can still chase using Guzzi in the name, like the one above. Additionally, their International trademark was just registered in 2021. We've been here in Sept 2001. This site is purely here for owner support and (I think) a promotional benefit to the brand, though they do nothing to benefit fully from it.
I can also tell you Polaris does backflips to support websites like this for all of their brands, mainly Indian in this genre.
And to clarify, it's Piaggio that sent the C&D, not Guzzi (though we all know they are one in the same).