Sax on the Web Forum banner

Am I in trouble?

19K views 103 replies 54 participants last post by  rleitch 
#1 ·
Just received an email from Jeffrey Powell to stop using the name Guardala since he owns it. Am I in trouble? This legal stuff is where I'm not good at.
Sakshama
 
#6 ·
It may be wise to not use the Guardala name as a headline on your website. You could find another name like you use "Sakshama Florida" for the Otto Link STM florida era copies you make. A name like "Sakshama Big Bro G" for example ;). In the description you can still mention that the original Guardala mouthpieces were the inspiration and so forth.
 
#7 ·
I suggest renaming them Sakshama G's or something along the line of it and just mention that they are lost waxes of the original.
 
#17 ·
You're welcome! I wish you well.

But it was actually JackLi that came up with the name first, I think (please see post #7).
 
#18 ·
Did he mention how he "owns" it? It's clearly a trade name that he and his partner used, but was it a registered trademark? Even if it wasn't registered, they could still launch a successful trademark infringement suit, but they would likely have to prove that there was either intent to deceive the public on your part, or there was actual confusion in the marketplace as a result of you using the name. And, in order to collect any general damages, they would have to prove that they were, in fact, damaged by your use of the name Guardala.

Ultimately, if it is highly unlikely that anyone would confuse your two products, then you'd probably be okay using the name Guardala. But your product is very similar to theirs. In fact, you call your product a Guardala because of the similarity. So I think they would at least have a colorable claim against you if they decided to seek an injunction preventing you from using the name in the future.

Don't take legal advice from anyone (including me) on an internet forum. Talk to an attorney who is well-versed in intellectual property law in your jurisdiction. If I were in your shoes, I would ignore this guy until he provides more specific information about how he "owns" the name, and how he is being damaged by your use of the name (e.g., reputation, goodwill, monetary loss, etc.). But then, I'm a risk-taker by nature. I'm not recommending that you do the same. Of course, as a side note, I probably wouldn't use the name of another product in my own product name to begin with, but that's irrelevant to your current situation.
 
#29 ·
Don't take legal advice from anyone (including me) on an internet forum. Talk to an attorney who is well-versed in intellectual property law in your jurisdiction..... I probably wouldn't use the name of another product in my own product name to begin with, but that's irrelevant to your current situation.
Ford is a last name too, but you probably can't make a car that looks like a Mustang and call it a Ford Mustang.
That's true. Guardala is a trademark, not only a last name. I would not use it as a brand or model name, I would think it's best to stay on the cautious side until you get proper legal advice.
 
#19 ·
I think I'd go with the "Guarhama" myself but seriously - your work is well known and highly regarded by virtually everyone. At this point you've reached "critical mass" in terms of being know for producing a very high quality product and there's no need for you to use the Guardala name. Change the names if you need to and in the description just say "similar to ........".
 
#21 ·
Is he talking about your ebay ads? I can't remember what they say but I saw one of yours the other day that had Guardala,FL,and Berg in the title. I know as an ebay guy I get bothered when I see a title for a mouthpiece and click on it because it says Guardala , Francois Louis or Berg and that is not what is for sale. I've seen other adds for Florida Link and Freddie Gregory and then you click on it and it is some copy I never heard of. I personally think it is better to leave the brand names out of the titles on ebay. I understand the attention getting side of it though.
 
#22 ·
With guitars the Precision and Jazz basses of Fender were protected names so they were referred to as p-basses or J-basses by those that copied them.

I don't think you can use the Guardala name unless you have permission. You might be able to say the pieces are inspired by Guardala mouthpiece designs but you can't use their name to sell your product. You seem to be using their name and model numbers which is definitely not on.

Mr Powell has shown everyone his share certificate. His name is on Guardala patent(s). He'd very protective of the name so I would take his letter seriously and stop using the name. He may well sue if you don't.
 
#23 ·
Be careful and just avoid problems by changing the name like you decided in a post above. These guys like to tie you up in court for years and make you spend a lot of money. He's just jealous because you have a superior product. Let him have all the karma that comes with that name. :bluewink:

I'm still going to get that Florida Link one day. Ran into some financial issues ( who hasn't in this economy).

I bet you thought I was jivin when I said I wanted one. I haven't forgotten.
 
#44 ·
thats funny as heck Pat!!!!! reminds me of one of the biggest marketing blunders ever....the Chevy Nova....nobody wanted it in S.America

im gonna buy a NoPlay clarinet
 
#28 ·
Don't use the Guardala name. I took copyright (not patent) law in the 1960s and although things change over the years there are certain things that should not be done. Even if your name was Guardala, you couldn't use it on a mouthpiece as (mentioned above) someone holds the registration of the name for the purpose of marketing mouthpieces. Even using the name on a any musical item would be reason for question. This would be like having your name be Kraft and marketing a cheese with the name Kraft on it. I see "Meyer copy" used a lot and that could be questioned too as it would imply that it is a direct copy of a Meyer.
You can use "similar to a Guardala" or "inspired by Guardala" but why take a chance on having the registree of the name question it? Since it has already been questioned by him, it is probably best to send a letter saying you will stop and take another route like having your mouthpiece models labeled G, M, S, etc. for the type they are.
Some companies can be really bitchy on this. A friend sold calenders with NY police cars in the photos giving the procedes to the 9/11 cause and was busted by NYPD and Ford for copyright infringement. Look at magazine ads and TV shows and you will notice Ford products often have the emblem in the grill missing or covered as Ford won't let the logo be replicated. Kind of stupid but legal. I look at it as free advertising.
Basically, you can't put another products name on a "same type" item even if the name is not registered. If you make a Sakshama mouthpiece and get known for it and I start making mouthpieces using your name, likeness or even a reference you can go after me even if you never registered the name but this is rarely the case as anyone with a good product will register the name, logo, styling, etc. Some years ago there was a Toyota guitar and that got stopped as people might think there was a guitar made by a famous company.
This info is based on my past work but does not always hold true....best to contact legal advice from an experienced person. In your case, the cost is probably not worth it in the long run. Who knows, in a few years Guardala may want to use YOUR name!!!
 
#31 ·
From what I have gathered there are quite a few claimants to the trademark, Dave Guardala appears to have sold it more than once, which is probably part of what he did time for. There can only be one true owner, and unless DG had the authority to sell or license the trademark, I would assume Jeffrey Powell is correct in protecting it.

More to the point may be any existing patents on the mouthpiece.
 
This is an older thread, you may not receive a response, and could be reviving an old thread. Please consider creating a new thread.
Top