Asked in Trademark

Q: Hello, we noticed though that a generic term has been trademarked causing issues on Amazon.

We noticed a competitor trademarked the PMU/Permanent Makeup keyword. We've been receiving a warning to remove these keywords from our listings. Otherwise, they will take it down. I don't think it's fair to trademark a commonly used term for one's interest. Or can you check what options we have for this case?

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2 Lawyer Answers
Erik Špila
Erik Špila
Answered
  • Trademarks Lawyer
  • Senec, Slovakia

A: Yes, this seems like unfair competition, but due dilligence must be performed first by a qualified IP lawyer in this case to provide you with most efficient strategy.

In most jurisdiction there is a way to initiate the trademark cancelation proceedings or trademark invalidation proceedings in which you can prove that the trademark should have not been registered. The situation you have provided seems like a kind of case where we would think about such option.

I highly recommend you to seek a local attorney in your country so he can help you with this.

I wish you a good luck with this.

1 user found this answer helpful

Fritz-Howard Raymond Clapp
Fritz-Howard Raymond Clapp PRO label
Answered
  • Trademarks Lawyer
  • Beverly Hills, CA

A: The registration for PMU PERMANENT MAKEUP does not grant exclusivity in the phrase "permanent makeup" because the applicant was required to disclaim what is merely descriptive of the goods. The registration includes the following: "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "PERMANENT MAKEUP" APART FROM THE MARK AS SHOWN".

Therefore this registration is NOT infringed by other marks containing the disclaimed phrase -- it would be infringed only by use of the ENTIRE mark.

If you have received a "takedown notice" from Amazon or any other online platform, it was initiated by the owner of the registration, and you should promptly submit a "counter-notice" that brings attention to the disclaimer in the registration.

This resource gives advice on how to respond to a takedown notice with a counter-notice (it refers to copyright claims but the same law and procedure applies to trademarks):

https://www.dmlp.org/legal-guide/responding-dmca-takedown-notice-targeting-your-content

1 user found this answer helpful

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