Zippo Manufacturing Company (ZMC) regularly polices internet auction sites concerning the sales of its products and has the legal authority to halt certain sales of products within the United States and several other countries under any of the following three circumstances:
1.SALES OF COUNTERFEIT PRODUCTS; OR THE SALE OF PRODUCTS NOT ORIGINATING FROM ZMC UNDER THE NAME “ZIPPO” OR ANOTHER OF THE TRADEMARKS HELD BY ZMC, OR THE USE OF A NAME OR A TRADEMARK THAT IS CONFUSINGLY SIMILAR TO ZIPPO;
2. SALES OF LIGHTERS FROM THIRD-PARTY MANUFACTURERS THAT HAVE THE REGISTERED SHAPE OF THE ZIPPO WINDPROOF LIGHTER; OR
3.SALES OF ZIPPO LIGHTERS THAT HAVE BEEN DECORATED WITHOUT THE WRITTEN CONSENT OF ZMC;
Each of the foregoing actions by a seller for commercial purposes constitutes a trademark infringement under U.S. law and the law in many countries and may lead to action being undertaken in defense of its legal rights by ZMC.
Any of the above infringements are likely to cause consumers to be deceived into believing that such products are authorized, approved, or in some other way associated with Zippo Manufacturing Company. As many customers of Zippo products are collectors, ZMC must also enforce its rights under the trademark laws in protection of these consumer/collectors who have a legitimate interest that the products which they have purchased are genuine Zippo products, also as to the shape and decoration.
Further explanation of each of the above three grounds for legal action are set forth below.
ZMC, the manufacturer of the world famous lighters which are sold under the trademark ZIPPO, has numerous Trademark Registrations for the trademark ZIPPO.
ZMC also regards the highly distinctive shape of its windproof lighter with its characteristic arcuate (bowed) top as a trademark and has obtained protection of it through trademark registration in the USA and in many other countries.
ZMC was founded in the U.S. in 1932 and has used the trademark ZIPPO continuously since that date. ZMC has actively sold ZIPPO brand lighters and other trademarked products in the USA and in over 160 countries for many years and continues to sell these products in the USA and worldwide. The Zippo windproof lighter has been described as a design icon of the Twentieth Century; and the ZIPPO trademark is regarded as one of the world's famous marks.
1. Sales of counterfeit products; the misuse of Zippo trademarks and copyrights. Trademarks are used to identify goods and services and to distinguish them from others. The Zippo marks include the famous ZIPPO brand name in various designs and formats and other names and marks, such as the shape of the Zippo windproof lighter and the Flame Logo, that are used as trademarks to identify lighters and other goods as originating from ZMC. The use of a trademark, without authorization, which is substantially identical to a trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark for identifying products not originating from the ZMC, is counterfeiting. Counterfeiting is a serious infringement of trademark law and may such use be subject to criminal sanctions as well.
Framing of, or linkage to any Zippo website, or use of any photographs, trademarks, designs or texts contained therein, without the express written consent of ZMC, is also an infringement of ZMC’s copyright and trademark rights.
“Keyword spamming” is another example of the misuse of trademarks. Keyword spamming is a search engine optimization technique that uses, often as a metatag, the trademark / brand name of another product in an effort to divert customers to one’s own product offering and is an infringement of the rights of the trademark owner.
2. Sales of other brands of lighters that have the shape of the Zippo windproof lighter
As mentioned above, ZMC has a trademark registration in the USA and in many other countries which protects the highly distinctive shape of its windproof lighter with its characteristic arcuate top (“Shape Mark”). Other products, not necessarily only lighters, which have this shape, infringe this Shape Mark. The scope of protection of the Shape Mark is not limited to any particular size.
ZMC takes action against products which bear a shape substantially identical to the one protected with the Shape Mark, including its characteristic arcuate top.
3.Unauthorized alteration, decoration, engraving of Zippo lighters and sales of Zippo lighters that have been engraved, decorated or otherwise altered without ZMC’s consent, infringe it’s trademark rights. Specifically, the alteration, decoration, engraving and sale of Zippo lighters, using images and designs that have not been authorized by ZMC, directly infringes Zippo’s trademark rights. Furthermore, the use of the ZIPPO name and of the famous registered Zippo lighter shape in auction website listings, including those on eBay, without ZMC’s consent, are also infringements. Such infringements are likely to cause consumers to be deceived into believing that these offered products are authorized, approved, or in some other way associated with ZMC. They are not. The unauthorized alteration or decoration of a Zippo windproof lighter has rendered it to be no longer genuine.
In addition, the decoration of Zippo lighters with images and designs not approved by ZMC is likely to tarnish the reputation of the ZIPPO trademark which for some eighty years has been perceived as an All-American icon. The Zippo brand is associated with the images that ZMC selects and affixes on them in its sole discretion. ZMC owes to its customers and to the many collectors of its Zippo windproof lighters the assurance of the integrity and authenticity of the designs and decorations on a Zippo windproof lighter.
For any of the above reasons, ZMC will demand that the commercial seller of such products cease & desist all such activities without any further delay. If such seller does not comply, ZMC will take whatever action is legally appropriate to enforce its legal rights.