Over several thousand Chinese sellers have been complained about infringement, because they have used this common name ‘Frisbee’

Several thousand Chinese sellers were reported for using the trademarked name 'Frisbee'

Frisbee is causing trouble again. The latest incident occurred on April 3, 2023, with the case number being 23-cv-02088. This time, 125 shops are being sued (a detailed list of the shops can be obtained by scanning the QR code at the bottom of the page). So far, WHAM-O HOLDING, LTD. has initiated 20 trademark infringement lawsuits against the “FRISBEE” trademark, with the earliest case dating back to May 2018. The frequency of infringement cases is as follows: 3 cases in 2018, 1 case in 2019, 5 cases in 2020, 3 cases in 2021, 7 cases in 2022, and 1 case in 2023 (so far). Many e-commerce platforms, including Amazon, eBay, Wish, and AliExpress, as well as thousands of Chinese sellers’ shops, have had their accounts and funds frozen due to FRISBEE trademark infringement lawsuits filed in the Illinois district court.

Adjudication period: The longest is 209 days (case number: 1:18-cv-07299), the shortest is 42 days (case number: 1:22-cv-01352), and the average period is 30-100 days. Compensation for absent defendants (per person): up to 500,000 US dollars, as low as 5,000 US dollars.

Without exception, the case was filed in the Illinois district court, and the plaintiff’s attorney is Keith A. Vogt, whom we are familiar with.

Unlike the ongoing infringement lawsuits involving LEVI’S, OAKLEY glasses, and BURBERRY, which are well-known brand names that are unlikely to be intentionally used, and which are almost all caused by the use of someone else’s graphic trademark, this case involves FRISBEE trademark infringement. This is when people find it difficult to accept, as “Frisbee” itself means “flying disc”. Is it wrong to use it as a keyword to describe a product?

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First, let’s take a look at the several basic rights that the plaintiff is based on: U.S. Trademark Registration Nos. 4,046,202; 970,089 and 679,186. Here is the earliest registered trademark status, WHAM-O HOLDING, LTD. The trademark holder registered this trademark in the toy category in 1958 and it is still valid today. In 2006, more categories were added, including electronics, jewelry, luggage, furniture, home goods, bedding, clothing, shoes, outdoor sports equipment and toys.

Frisbee is a legally valid registered trademark, so the other party has a valid claim against us for trademark infringement. Some may argue that this term has become a generic name for the product, so why can it still be protected by trademark rights?

As early as the 1950s, Frisbee did not have the meaning of a flying disc. At that time, trademark law was not perfect, and Frisbee was registered as a trademark and has been used as such ever since. Let’s take a look at the dictionary definition: The term is currently included in the dictionary, but as you may notice, there is a clear label “trademark” above the term, which indicates that when the dictionary includes the term as a flying disc, it also recognizes it as a valid trademark.

Trademark law stipulates that when a trademark gradually loses its distinctiveness and becomes a generic name for the product during use, anyone can challenge the validity of the trademark on the grounds that it has become a generic name.

On August 9, 22, a company in Shenzhen filed for the cancellation of this trademark. The latest status check was on April 26, 23, when the Shenzhen company withdrew the cancellation and reached a settlement with the plaintiff. The Frisbee trademark is currently a legally valid trademark.

Response measures:

1) For those who have not received complaints yet, change the name or remove it from use as soon as possible.

2) Early warning to “avoid infringement” is the effective solution to avoid infringement. The best way to avoid “infringement” is to prevent it in advance. Before listing or using, you can check it through the following three websites:

1. Infringement detection tool: Copy the link and open it on your computer: https://yayip.com/index/tort/index.html

2. https://www.uspto.gov/trademarks/search

3. https://branddb.wipo.int/branddb/en/

3) If the account has been complained, please recognize the fact of infringement. After the complaint is delivered, the defendant needs to submit a reply within 21 days, which becomes the response period. Regardless of whether it is determined that one has infringed, one must handle it within the response period. If the defendant does not reply or ignore it within the time limit, the court will directly decide that all the plaintiff’s litigation is established, and the defendant will be subject to a default judgment award, not only the frozen amount will be deducted, but also face huge compensation.

4) Please ask a professional lawyer to issue a lawyer’s letter or settle or respond with the other party. Our company accepts such cases and has rich experience.

Conclusion:

Regarding the occurrence of this case, the author expresses regret. However, the root cause of such incidents is that the intellectual property awareness of individuals or enterprises in China has not kept up with the times. We need to learn from experience, and Chinese companies need to truly start to explore product quality and pay attention to brand building. Only by establishing our core competitiveness can we steadily develop and grow…

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