# So I received this certified letter in the mail yesterday...



## wetshavingproducts

I'm not asking for advice. I know what needs to be done. But I'll just leave this here and you can form your own conclusions and if you want to discuss, I'm happy to talk about it.


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## The Efficacious Gentleman

Would be interesting to see how their packaging is trademarked. 

""Grey" is a trademark of.....?" sounds very vague to me


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## wetshavingproducts

They're not claiming trademark infringement, they're claiming this weird little area of the law called trade dress. They're saying their customers are being confused by the packaging as to whose is whose.


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## dixiedragon

Aren't they special. *eye roll*

BTW, I love your slogan of Real. Manly. Soap.


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## doriettefarm

I'm not a lawyer and don't play one on TV.  The only similarities I see between their packaging and yours is the font . . . along with your white circle in the upper right corner vs their black circle in the upper right corner.  Is that seriously enough to meet the criteria for a trade dress lawsuit?


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## IrishLass

wetshavingproducts said:


> They're saying their customers are being confused by the packaging as to whose is whose.


 
I would think the completely different company names and totally different design of company logos would make it blatantly obvious as to whose is whose (don't their customers read labels?), but what do I know? The suspicious part of me makes me wonder if they are not using 'customer confusion' as a front for something else. 

The letter states that their packing is 'unique' and 'inherently distinct', but the only thing 'unique' and 'inherently distinct' that I can see on their packaging is the picture of the pipe smoking, bearded sasquatch dude, and the name 'Dr. Squatch'- neither of which you have on yours- not even anything close to that. 

The box is certainly not unique- Kraft sells those in bulk online to anyone, complete with the circle cut-out in the corner. Lots of soapers use them. Are they going to send 'cease & desist' letters to them, too?

The fonts they are using are not unique to them either, nor is the border that runs along the edges of their box, nor the placement of the sticker identifying the type of soap inside. They look just like the fonts and borders and sticker placement that I see on thousands of other company's packaging. The only thing distinctly unique is the name and logo. 

My hubby, who doesn't suffer fools gladly, thinks it would serve them right if they were 'Twitter-shamed'. :razz:


IrishLass


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## earlene

Unbelievable that customers confuse your rectangular shaped soap's packaging for the other square shaped soap's 'unique and non-funtional' packaging.  (And what does non-functional packaging even mean?)

The font is not the same.  Notice the B on your soap's packaging and the B on his Bay Rum soap (on his website).  Not even a match.  The only similarity between fonts that I see is the drop shadow and using all caps.   (I went to both yours and his websites to get a better look at the packaging of bar soaps.)

I guess the cigar band type part of the label is similar, but is it similar enough that it's forbidden on your Wet Shaving Soap packages when it's in a box with a cut-out hole and lines around the edge?  Maybe so if he is so very well known and his products have been around for a long time, but it sure seems more than nit-picky.  

BTW, he claims his soap is natural (checked out a blogpost via a link on his site and he says so.)  Now I'm being nit-picky.


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## Rusti

Cellador said:


> That's the only thing I noted that looked even remotely similar- the text font in the bar description. But, it hardly creates brand confusion...I'm not an expert either, but I think this would be really difficult to prove.



The problem this comes down to is who's got enough money to fight this out in court. Yeah, the burden of proof is on Dr Squatch if it did go to trial, and I expect loss of business due to 'confusion' would be really hard to prove.

They're counting on Wet to fold like paper and not actually confront them. That's the thing about some of this stuff that irritates the every loving daylights out of me. It's never about who's actually been wounded and whether or not the proof is there, it's just who's got the deepest pockets to keep paying the lawyers. If this were the other way around there wouldn't be a whole lot Wet could do besides shame the hell out of them all over social media.


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## Millie

I like your packaging! I like the dr squach packaging too, and there is no way I would confuse the two! The only similarities I see are generic and do not define either brand. It makes me wonder how many other businesses received a cease and desist from them. It would help if they were explicit about what they want you to change. Hrumph.


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## wetshavingproducts

doriettefarm said:


> I'm not a lawyer and don't play one on TV.  The only similarities I see between their packaging and yours is the font . . . along with your white circle in the upper right corner vs their black circle in the upper right corner.  Is that seriously enough to meet the criteria for a trade dress lawsuit?



Well, luckily for me I am a lawyer and can do legal research, and my research says an emphatic no unless they can somehow prove actual confusion, but my god I cannot fathom the idiot they'd have to drag in.

"So this box a rectangle and has WSP plastered everywhere, and this box is a square with a weird robe wearing mascot with bubbles on it. Are you confused as to whether these brands are the same?"



IrishLass said:


> The box is certainly not unique- Kraft sells those in bulk online to anyone, complete with the circle cut-out in the corner. Lots of soapers use them. Are they going to send 'cease & desist' letters to them, too?
> 
> My hubby, who doesn't suffer fools gladly, thinks it would serve them right if they were 'Twitter-shamed'. :razz:
> 
> 
> IrishLass



Do you have a link? That may prove very useful if they actually issue a complaint. And just more icing on the cake if they keep sending me letters.

Feel free to share. I didn't write it. I give you free license to the photos.



earlene said:


> Unbelievable that customers confuse your rectangular shaped soap's packaging for the other square shaped soap's 'unique and non-funtional' packaging.  (And what does non-functional packaging even mean?)
> 
> The font is not the same.  Notice the B on your soap's packaging and the B on his Bay Rum soap (on his website).  Not even a match.  The only similarity between fonts that I see is the drop shadow and using all caps.   (I went to both yours and his websites to get a better look at the packaging of bar soaps.)
> 
> I guess the cigar band type part of the label is similar, but is it similar enough that it's forbidden on your Wet Shaving Soap packages when it's in a box with a cut-out hole and lines around the edge?  Maybe so if he is so very well known and his products have been around for a long time, but it sure seems more than nit-picky.
> 
> BTW, he claims his soap is natural (checked out a blogpost via a link on his site and he says so.)  Now I'm being nit-picky.



It's a legal standard if they decide to actually try for the real trade dress protection of inherently distinctive, which they absolutely cannot do as every element of their design is either generic or functional. But the lawyer put it in just in case.

No, the font is not the same. The only similarity is a drop shadow which is ubiquitous in design and fonts in general.

Since a cigar band is widely used in the industry, it's probable that it's just a generic design choice. However, since it reduces the cost & serves as a tamper evident seal, it is functional and not deserving of trade dress protection.

A cutout is generic as ****. No protections whatsoever.

He's only been around since 2014 according to the letter, so I actually predate him as a company, but my packaging does not predate theirs. But as everything they use is generic and basically looks like every other soap box, he cannot possibly get distinctiveness.

They buy their soaps from thesoapguy. Don't even bother to change the scent names. No joke. Go look. 

https://thesoapguy.com/masterloavespage.html


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## Rusti

wetshavingproducts said:


> Well, luckily for me I am a lawyer and can do legal research....



Bwahaha! So the scary lawyer letter that would freak someone else out just made you do a Dwayne Johnson eyebrow, I take it.


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## wetshavingproducts

Rusti said:


> Bwahaha! So the scary lawyer letter that would freak someone else out just made you do a Dwayne Johnson eyebrow, I take it.



My initial reaction was "Kitten Love? You can't be serious?" My next reaction was throw it in the trash and see if they wanted to send me additional letters. My final reaction was "I'm going to post this on social media and let it backfire on them." Oh, and I actually responded to suck up some of their legal retainer and just annoy the idiot attorney who didn't bother to read the letter he signed.


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## CaraBou

What a bunch of crap.  I would not be scared!


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## Susie

If you are an attorney, I would make them take me to court!  I would send them a "you prove it, or YOU cease and desist!" letter a week until they either took me to court, or went away.

ETA:  Here, Alibaba will sell you lots:

https://www.alibaba.com/product-detail/Good-quality-low-price-custom-designed_60605786478.html


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## dixiedragon

If you send them a letter that says "I'm sorry you feel that way" I will give you a dollar.

Also, "Butthurt is not legally actionable."


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## wetshavingproducts

dixiedragon said:


> If you send them a letter that says "I'm sorry you feel that way" I will give you a dollar.
> 
> Also, "Butthurt is not legally actionable."



Well, that would certainly pay for the postage....

If they actually bother sending a response to my response, I'll be sure to include that.


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## SunRiseArts

dixiedragon said:


> If you send them a letter that says "I'm sorry you feel that way" I will give you a dollar.
> 
> Also, "Butthurt is not legally actionable."


 

Thanks for the belly laugh.  You cracked me up.:mrgreen:


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## Saponista

I'm sorry this happened


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## Susie

But if it happened, I am glad it happened to someone who can stick up for himself!  Not that I would wish it on my worst enemy, however.


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## Aline

Wow, they picked on the wrong guy! Checked out their website...very ugly logo. 

Throwing money down the drain must be part of their business plan because along with this frivolous lawsuit their Google Adwords Ad comes up when you search on the business name!

On a serious note, I wonder how many other people the lawyer has contacted and how freaked out they are


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## SunRiseArts

Yep.  I would have totally freak out.


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## Susie

Not me, it would have made me mad.


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## cmzaha

LOL, this reminds me of our Orange County Attorney that was fantastic. He was have some construction done on his home and the contractor did not finish. Really dumb to think he could win against a very high end OC attorney. Yep Jackson sued him... Went to him with no case against our partner and walked away with over 10 x's what he was trying to buy us out with, this after 2 other attorneys told me to take what was offered and chalk it up to experience.


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## wetshavingproducts

Susie said:


> Not me, it would have made me mad.



I was mostly embarrassed that a member of the bar signed his name to it and I'm also a member of the same bar.  Then I got righteously indignant that these people have the nerve to even try such a strong arm tactic.

If they had asked nicely, I still would've told them that I'm not going to change anything just because you want me to and that the only thing that's even remotely similar is the use of the wraparound band, but since it is 100% functional, there really isn't much in the way of design that either of us can change to make them look significantly different. The only other element would be the circle hole in the upper right hand corner, but that's both generic and functional and they can shove off as they clearly weren't the first to use it anyway.


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## Aline

Please keep us updated as to how this unfolds!
 I am seriously fascinated.....



wetshavingproducts said:


> I was mostly embarrassed that a member of the bar signed his name to it and I'm also a member of the same bar.  Then I got righteously indignant that these people have the nerve to even try such a strong arm tactic.
> 
> If they had asked nicely, I still would've told them that I'm not going to change anything just because you want me to and that the only thing that's even remotely similar is the use of the wraparound band, but since it is 100% functional, there really isn't much in the way of design that either of us can change to make them look significantly different. The only other element would be the circle hole in the upper right hand corner, but that's both generic and functional and they can shove off as they clearly weren't the first to use it anyway.


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## DeeAnna

15 U.S.C. 1125 (Section 43 of the Lanham Act): 
(a) "...Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which ... is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person...."

I've read the letter twice now and am struck by how vague the complaint is. There are no specific details about what is causing the confusion or deception. Quite frankly it looks like a fishing expedition to me -- something to get you worried without the other side having to spend a lot of time and money on the effort. It's their responsibility to provide specifics about what bothers them, not for you to have to guess. 

If you have access to a lawyer, I would run it past him or her and get some legal perspective. Yes, I understand you may be a lawyer, but your comment, "...Then I got righteously indignant that these people have the nerve to even try such a strong arm tactic...." is a sign that you are thinking about this as a client, not as a lawyer. Even lawyers can benefit from impartial counsel from their peers.


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## Susie

DeeAnna said:


> 15 U.S.C. 1125 (Section 43 of the Lanham Act):
> (a) "...Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which ... is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person...."
> 
> I've read the letter twice now and am struck by how vague the complaint is. There are no specific details about what is causing the confusion or deception. Quite frankly it looks like a fishing expedition to me -- something to get you worried without the other side having to spend a lot of time and money on the effort. It's their responsibility to provide specifics about what bothers them, not for you to have to guess.
> 
> If you have access to a lawyer, I would run it past him or her and get some legal perspective. Yes, I understand you may be a lawyer, but your comment, "...Then I got righteously indignant that these people have the nerve to even try such a strong arm tactic...." is a sign that you are thinking about this as a client, not as a lawyer. Even lawyers can benefit from impartial counsel from their peers.



Agreed on all points.  I am a hot head, and you would not like to see the letter I would have replied with.  But even I would have run it by someone that could be objective.


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## DeeAnna

I'm not a lawyer, but I'm married to one, the step-mom to another, and friends to several more. You'd be surprised how many people avoid getting legal advice from an attorney for whatever reason and that often ends up being a very expensive mistake. Lawyers are often inclined to think they can represent themselves in legal matters, but they have the same problems as everyone else about keeping cool and objective when they're the ones sitting in the hot seat.


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## wetshavingproducts

Until it becomes a complaint, it really is a fishing expedition. C&D letters are a dime a dozen. Especially if there is no specificity to the issue at hand. Now if they had cited a registered trademark and pointed out exactly how their trademark rights are being violated, I'd actually be worried. But instead, it's just a vague "We're butt hurt and want you to stop" letter.

The legal standard is actual confusion (requires witness testimony) or prima facie confusion (judged by a judge) (which the lawyer is wise enough to not allege).


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## DeeAnna

"...if they had cited ... exactly how their ... rights are being violated, I'd actually be worried. But instead, it's just a vague "We're butt hurt and want you to stop" letter...."

Yep, that's how I see it too. The other party might be willing to escalate, but they might not. At this point, however, their complaint is "all hat, but no cattle."


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## wetshavingproducts

DeeAnna said:


> Yep, that's how I see it too. The other party might be willing to escalate, but they might not. At this point, however, their complaint is "all hat, but no cattle."



If anything, I imagine they will send a second letter to my reply with actual witness testimony or some other actual evidence; or a vague allegation that upon information and belief it is prima facie confusingly similar.

I am 99.99% certain that both the following are true: 1) they aren't willing to pay for an actual complaint to be filed & served, and 2) the law firm in question is not willing to stake their bar numbers on filing such a frivolous lawsuit without actual and credible witness testimony.


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## dixiedragon

DeeAnna said:


> "...if they had cited ... exactly how their ... rights are being violated, I'd actually be worried. But instead, it's just a vague "We're butt hurt and want you to stop" letter...."
> 
> Yep, that's how I see it too. The other party might be willing to escalate, but they might not. At this point, however, their complaint is "all hat, but no cattle."


 
I have never heard the expression "all hat, but no cattle" before. It is delightful. Can you please use it in some sentences so I can use it correctly? I am thinking it means, all show, no substance?


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## DeeAnna

dixiedragon said:


> I have never heard the expression "all hat, but no cattle" before. It is delightful. Can you please use it in some sentences so I can use it correctly? I am thinking it means, all show, no substance?



You nailed it!  

A person who wears fancy cowboy boots and expensive cowboy hats and likes to boast and brag, but doesn't have a clue about being a real cowboy, rancher, or farmer. 

"That fella over there is all hat and no cattle."


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## BattleGnome

dixiedragon said:


> I have never heard the expression "all hat, but no cattle" before.



About an hour before DeeAnna posted it, I read about the phrase on a list of "extinct insults we need to start using" (or something similarly clickbatey)


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## Susie

BattleGnome said:


> About an hour before DeeAnna posted it, I read about the phrase on a list of *"extinct insults we need to start using"* (or something similarly clickbatey)



They get me all the time when they say things like that!


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## TBandCW

Yes, please keep us posted.  I'm no lawyer, but I've used my Legal Shield membership a few times.  Money well spent!  I was going to suggest it till you mentioned you're a lawyer!

Note:  There is a local band here named All Hat No Cattle!


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## aharvick

I’ve done graphic design for some time. People don’t search for products by packaging, they search by name. Wet Shaving Products sounds nothing like Dr. Squatch. This sounds like someone is have a hissy fit. There is a lot more to trademarks and copyrights than mere slight resemblances. He does not own the rights to the fonts, this I can tell you, nor any of the dividing border dingbats either. Put his image into google image search and see how many images pop up. This may be how they found your packaging and everyone else there got a letter as well. It only picks up slight similarities such as fonts or placement. This is how people search to find out if someone has profiles on other social sites or if others are using any logos resembling their trademarked designs. If you put your own photo in there, you can find out if anyone is using your photos as well! Always a good thing to check for.


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## lsg

I suggest that you pay a fee and consult an attorney.  They can communicate with authority to the people who sent you the letter.  One letter from your attorney should be all it takes to set them right.


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## therealshari

So, I am not a lawyer but have been around the block a few times. If you want to mess with them, Jack Haldrup, their CEO, is barely wet behind the ears. 
Here is the story of their growth. *








						How Dr Squatch's 31-year-old founder makes millions selling soap online
					

When Amazon arrived, small businesses suffered the brunt of the damage. But there's a new wave of savvy entrepreneurs who still compete with the giants of retail - even in saturated markets.




					www.afr.com
				



*
What is truly funny is that someone has already taken aim at him. TENZER-FUCHS v. DR. SQUATCH, INC.

As far as I can see in my brief search, I would reply to them with the "butthurt" comment and remind them that they should clean up their own front porch first. Solve their shipping issues first or a whole lot of soap makers could have redress for giving them a bad name.

Have fun!


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## TheGecko

To @SissysommerFeldt4 and @therealshari -

Might be a good idea to check the date of the thread before responding.  This thread is thread is five years old.

And @therealshari you're trying to compare apples and onions.  Tenzer-Fuchs v Dr Squatch Inc has nothing to do with the original post and as such, it not the least bit funny even in a 'what goes around, comes around' sort of way.


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## AliOop

My typical advice to clients in these situations is not to respond to a generic letter. Nope, not even a “go jump in a lake” response. Never fan the flames in a potential legal dispute! As the saying goes, discretion is the better part of valor. 

Now, if the letter is specific and detailed as to the alleged violations, I immediately help connect them with qualified patent-trademark counsel. This is a specialty area of law and requires help from someone who knows it well. 

Fixing a violation can be easy (not always) and can save many thousands of dollars in legal fees and damages. 

Unfortunately, fighting a false claim is not easy; it is expensive and can take a long time. A good patent-trademark lawyer will help you evaluate whether to spend the money fighting, or rebranding. Sometimes the latter will be the better way to go, especially if you get a waiver of all claims and atty fees from the other side.


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## TheGecko

AliOop said:


> Unfortunately, fighting a false claim is not easy; it is expensive and can take a long time.


That's the way it is with anything...even if you win, you lose.  It's why companies 'settle out of court' because it's cheaper just to pay someone $10,000 on a false claim, than it is to rack up $25,000 in legal fees.  Ex-fiance's father used to brag about how much he made with 'slip and falls' and since it's a Personal Injury payout, no income tax.  But there is thing called 'karma' and it bit him big time when he really did 'slip and fall' in a store and injured his back...in a store that he had already sued.  Needless to say, he didn't get any money and it ended his 'career'.


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