Episode Transcript
Available transcripts are automatically generated. Complete accuracy is not guaranteed.
Speaker 1 (00:00):
All right, good morning.
Speaker 2 (00:01):
I'm going to set up the context for this conversation
very quickly so we can get to my guest and
get into the actual subject matter of it. But you
may recall, maybe it's probably a little less than a
year ago, I did a subject on I did a
topic on the show about these insulated Stanley drinking cups,
and I don't even remember what the concept was. It
was like, you know, people lining up at Target to
(00:24):
get the special colors of the Stanley cups or whatever.
I don't own one of these things, but they're very,
very popular. And at the time, what I said on
the show was, I don't know if that Stanley is
the same Stanley as like my Stanlee hammer or Stanley
Blackendecker like so or my Black and Decker tools.
Speaker 1 (00:45):
I don't know if it's the same Stanley.
Speaker 2 (00:48):
And I did end up learning that it's not the
same Stanley, but that's important context for this next conversation.
We're joined by Bill Honeker, who is who is the
IP guy IP Intellectual Property and you can find him
at IP guy dot com.
Speaker 1 (01:05):
And I saw a note.
Speaker 2 (01:07):
About Stanley sewing Stanley which reminded me of that topic.
Speaker 1 (01:11):
We did so, Bill, Welcome to Kowa. It's good to
have you here.
Speaker 3 (01:14):
Thank you, ros I appreciate it.
Speaker 1 (01:16):
All right, So we got about we had about seven minutes.
Speaker 2 (01:18):
Let's jump right in which which Stanley is suing which
other Stanley, and why.
Speaker 3 (01:24):
Stanley, Black and Decker is suing Pacific Market International PMI. Stanley,
Black and Decker's the tool manufacturer. Pm I is the
beverage cup container insulated cup manufacturer, and Stanley Black and
Decker feels that pm I is breaching or breaching their
(01:47):
contract and infringing their trademark Stanley.
Speaker 2 (01:51):
So what really struck me as interesting about this story,
and listeners may be wondering this too, is Stanley the
insulate cups have been selling these insulated cups for a
long time. And it's a pretty old company. I think
it's not as only old as the tool company. It's
a pretty old company. They've been around a while.
Speaker 3 (02:10):
So why now, Yeah, Stanley Tool Company's been around since
eighteen forty three and the Stanley Cup Company has been
around since nineteen thirteen, which shocked me. I thought they
were both the same companies. So they've coexisted for one
(02:31):
hundred and twelve years. I think there were some agreements
reached between the companies. I think the reason for the
trademark slash contract fight right now is because the Beverage
Company has been getting some bad The beverage cup company
has been getting some bad press. They had some products
(02:51):
they had to remove from the market because of burn potential,
and then more recently there's been some allegation of lead
being in their products. Those are just allegations. But I
think Stanley, Black and Decker is not happy with the
bad publicity right now that made have that. I think
they were just fine with things.
Speaker 2 (03:13):
Yeah, and I read somewhere and it might even have
been on your site, and so I could be remembering
this wrong, that there was something where Stanley the drink company,
the cup insulant cup company would have something not just
the word Stanley, but some logo or something that would
(03:33):
prevent people from confusing the two companies.
Speaker 1 (03:36):
I am pretty sure I read that on your site.
Speaker 3 (03:39):
Yeah, yeah, what they had agreed to. And again, there's
been a few agreements, but the most recent one was
Stanley the cup manufacturer had agreed to use its name
PMI in connection with Stanley to avoid confusion. They now
use Stanley Knight teen thirteen. I'm sure a throwback to
(04:02):
when they started, which Blackendecker is alleging and violates the contract.
And they've also they're also alleged to have just used
Stanley alone in marketing. So I mean, there's clear confusion,
and I suspect my suspicion is that they'll work out
(04:23):
another agreement instead of fighting this through the court. But
it is clearly a case of confusion, but confusion that's
gone on for years and years.
Speaker 2 (04:37):
Right, So all right, I'm going to make a statement
and you tell me if this is right or wrong.
And by the way, for folks who are just joining,
we're talking with Bill Honeker, who's the IP Guy his
website ipguy dot com. He's an expert on intellectual property.
He speaks on these issues as well. So imagine, So
my name's Ross. There's a clothing store called Ross, right,
(04:57):
Ross Dress for less, And let's just make up a
hypothetical company also called Ross that makes.
Speaker 1 (05:04):
Computer monitors. They're both called Ross.
Speaker 2 (05:08):
My understanding is that under a trademark kind of law,
neither one could sue the other one over the use
of the name Ross because the companies are so clearly
different from each other that you cannot make a colorable
argument for consumer confusion between the two.
Speaker 1 (05:26):
Is that right, as far as I've gone.
Speaker 3 (05:28):
So far, absolutely correct. Okay, couldn't have said it better myself.
Speaker 1 (05:33):
Okay.
Speaker 2 (05:34):
So what to me then, is interesting about this one
is that it's very easy to imagine that a company
that makes metal insulated cops that you might even carry
out on a job site where someone's using black and
Decker tools could be the same Stanley that makes other
things out of metal. So there there could legitimately be
(05:57):
confusion here, right.
Speaker 3 (06:00):
Yeah, and it gets even more confusing sin I mean
my dad work construction. He carried a Stanley thermos to
work every day. I would always and worked with Stanley
tools all day at his job. There's clearer confusion. What's
not happened is and what trademark owners should always do
(06:25):
is police their marks and make sure that others don't
get close because it weakens the mark or it can
create bad publicity. If the one of the mark owners
isn't it isn't getting good press, just like Stanley cup
in this case.
Speaker 1 (06:45):
That makes sense.
Speaker 2 (06:45):
All right, we got one minute left, So would it
would it be correct to say that Normally you would
assume that the older company, that the company that's had
the name for longer, would have the advantage as long
as they were at trying to protect their name in
the past.
Speaker 3 (07:03):
Yes. Always In the United States, just using a trademark
gives your trademark rights. So the first one to use
it has the strongest rights. Okay, Stanley Blackendecker should have
stopped Stanley Cup back in nineteen.
Speaker 2 (07:20):
Thirty, Back in nineteen thirteen, it's been the smart thing
to do. Okay, so we got just a few seconds left.
What do you expect the outcome will be? I don't
just mean you expect they will negotiate a settlement. Give
me a little more sense of what you expect a
settlement might look like. For example, will the cup company
have to add something significant to the word Stanley.
Speaker 1 (07:38):
On the cups?
Speaker 2 (07:39):
Or will the cup company have to pay a royalty
fee for every cup they sell?
Speaker 1 (07:43):
What do you think is going to look like?
Speaker 3 (07:46):
Think the I think it'll look like they have to
put what they've agreed to in the contract, that they
have to put PMI on the cup to make it
clear that they're not associated with Stanley. I doubt if
there will be damages paid because of Stanley Blackendeck are
allowing them to use this name throughout the years, but
(08:08):
I think they'll have to designate the name Stanley in
a different way to make sure it's not confusingly similar.
Speaker 1 (08:16):
Very good.
Speaker 2 (08:17):
I'll take your I'll take your expert prediction, and we'll
see how it all plays out. Bill Honeker is the
IP Guy. His website is IP Guy. That's guy dot com.
If you want to get some information on IP or
you need someone to speak about it to your organization,
you can get in touch with Bill. Thanks for your time, Bill,
really interesting conversation. Appreciate it.
Speaker 3 (08:37):
Thanks, Ross, I really appreciate it, all right,
All right, good morning.
Speaker 2 (00:01):
I'm going to set up the context for this conversation
very quickly so we can get to my guest and
get into the actual subject matter of it. But you
may recall, maybe it's probably a little less than a
year ago, I did a subject on I did a
topic on the show about these insulated Stanley drinking cups,
and I don't even remember what the concept was. It
was like, you know, people lining up at Target to
(00:24):
get the special colors of the Stanley cups or whatever.
I don't own one of these things, but they're very,
very popular. And at the time, what I said on
the show was, I don't know if that Stanley is
the same Stanley as like my Stanlee hammer or Stanley
Blackendecker like so or my Black and Decker tools.
Speaker 1 (00:45):
I don't know if it's the same Stanley.
Speaker 2 (00:48):
And I did end up learning that it's not the
same Stanley, but that's important context for this next conversation.
We're joined by Bill Honeker, who is who is the
IP guy IP Intellectual Property and you can find him
at IP guy dot com.
Speaker 1 (01:05):
And I saw a note.
Speaker 2 (01:07):
About Stanley sewing Stanley which reminded me of that topic.
Speaker 1 (01:11):
We did so, Bill, Welcome to Kowa. It's good to
have you here.
Speaker 3 (01:14):
Thank you, ros I appreciate it.
Speaker 1 (01:16):
All right, So we got about we had about seven minutes.
Speaker 2 (01:18):
Let's jump right in which which Stanley is suing which
other Stanley, and why.
Speaker 3 (01:24):
Stanley, Black and Decker is suing Pacific Market International PMI. Stanley,
Black and Decker's the tool manufacturer. Pm I is the
beverage cup container insulated cup manufacturer, and Stanley Black and
Decker feels that pm I is breaching or breaching their
(01:47):
contract and infringing their trademark Stanley.
Speaker 2 (01:51):
So what really struck me as interesting about this story,
and listeners may be wondering this too, is Stanley the
insulate cups have been selling these insulated cups for a
long time. And it's a pretty old company. I think
it's not as only old as the tool company. It's
a pretty old company. They've been around a while.
Speaker 3 (02:10):
So why now, Yeah, Stanley Tool Company's been around since
eighteen forty three and the Stanley Cup Company has been
around since nineteen thirteen, which shocked me. I thought they
were both the same companies. So they've coexisted for one
(02:31):
hundred and twelve years. I think there were some agreements
reached between the companies. I think the reason for the
trademark slash contract fight right now is because the Beverage
Company has been getting some bad The beverage cup company
has been getting some bad press. They had some products
(02:51):
they had to remove from the market because of burn potential,
and then more recently there's been some allegation of lead
being in their products. Those are just allegations. But I
think Stanley, Black and Decker is not happy with the
bad publicity right now that made have that. I think
they were just fine with things.
Speaker 2 (03:13):
Yeah, and I read somewhere and it might even have
been on your site, and so I could be remembering
this wrong, that there was something where Stanley the drink company,
the cup insulant cup company would have something not just
the word Stanley, but some logo or something that would
(03:33):
prevent people from confusing the two companies.
Speaker 1 (03:36):
I am pretty sure I read that on your site.
Speaker 3 (03:39):
Yeah, yeah, what they had agreed to. And again, there's
been a few agreements, but the most recent one was
Stanley the cup manufacturer had agreed to use its name
PMI in connection with Stanley to avoid confusion. They now
use Stanley Knight teen thirteen. I'm sure a throwback to
(04:02):
when they started, which Blackendecker is alleging and violates the contract.
And they've also they're also alleged to have just used
Stanley alone in marketing. So I mean, there's clear confusion,
and I suspect my suspicion is that they'll work out
(04:23):
another agreement instead of fighting this through the court. But
it is clearly a case of confusion, but confusion that's
gone on for years and years.
Speaker 2 (04:37):
Right, So all right, I'm going to make a statement
and you tell me if this is right or wrong.
And by the way, for folks who are just joining,
we're talking with Bill Honeker, who's the IP Guy his
website ipguy dot com. He's an expert on intellectual property.
He speaks on these issues as well. So imagine, So
my name's Ross. There's a clothing store called Ross, right,
(04:57):
Ross Dress for less, And let's just make up a
hypothetical company also called Ross that makes.
Speaker 1 (05:04):
Computer monitors. They're both called Ross.
Speaker 2 (05:08):
My understanding is that under a trademark kind of law,
neither one could sue the other one over the use
of the name Ross because the companies are so clearly
different from each other that you cannot make a colorable
argument for consumer confusion between the two.
Speaker 1 (05:26):
Is that right, as far as I've gone.
Speaker 3 (05:28):
So far, absolutely correct. Okay, couldn't have said it better myself.
Speaker 1 (05:33):
Okay.
Speaker 2 (05:34):
So what to me then, is interesting about this one
is that it's very easy to imagine that a company
that makes metal insulated cops that you might even carry
out on a job site where someone's using black and
Decker tools could be the same Stanley that makes other
things out of metal. So there there could legitimately be
(05:57):
confusion here, right.
Speaker 3 (06:00):
Yeah, and it gets even more confusing sin I mean
my dad work construction. He carried a Stanley thermos to
work every day. I would always and worked with Stanley
tools all day at his job. There's clearer confusion. What's
not happened is and what trademark owners should always do
(06:25):
is police their marks and make sure that others don't
get close because it weakens the mark or it can
create bad publicity. If the one of the mark owners
isn't it isn't getting good press, just like Stanley cup
in this case.
Speaker 1 (06:45):
That makes sense.
Speaker 2 (06:45):
All right, we got one minute left, So would it
would it be correct to say that Normally you would
assume that the older company, that the company that's had
the name for longer, would have the advantage as long
as they were at trying to protect their name in
the past.
Speaker 3 (07:03):
Yes. Always In the United States, just using a trademark
gives your trademark rights. So the first one to use
it has the strongest rights. Okay, Stanley Blackendecker should have
stopped Stanley Cup back in nineteen.
Speaker 2 (07:20):
Thirty, Back in nineteen thirteen, it's been the smart thing
to do. Okay, so we got just a few seconds left.
What do you expect the outcome will be? I don't
just mean you expect they will negotiate a settlement. Give
me a little more sense of what you expect a
settlement might look like. For example, will the cup company
have to add something significant to the word Stanley.
Speaker 1 (07:38):
On the cups?
Speaker 2 (07:39):
Or will the cup company have to pay a royalty
fee for every cup they sell?
Speaker 1 (07:43):
What do you think is going to look like?
Speaker 3 (07:46):
Think the I think it'll look like they have to
put what they've agreed to in the contract, that they
have to put PMI on the cup to make it
clear that they're not associated with Stanley. I doubt if
there will be damages paid because of Stanley Blackendeck are
allowing them to use this name throughout the years, but
(08:08):
I think they'll have to designate the name Stanley in
a different way to make sure it's not confusingly similar.
Speaker 1 (08:16):
Very good.
Speaker 2 (08:17):
I'll take your I'll take your expert prediction, and we'll
see how it all plays out. Bill Honeker is the
IP Guy. His website is IP Guy. That's guy dot com.
If you want to get some information on IP or
you need someone to speak about it to your organization,
you can get in touch with Bill. Thanks for your time, Bill,
really interesting conversation. Appreciate it.
Speaker 3 (08:37):
Thanks, Ross, I really appreciate it, all right,
The Ross Kaminsky Show News
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