NATO Strap Store - TM infringement!

I've just received this from NATO Strap Store. Not being an IP lawyer, can this be right? Having Googled Ron E Sabo, he seems a really nice reasonable guy!!!!

Dear customer,
First the good news:
Our store is back and open again.
As you may have noticed, Shopify suspended our store this week due to an alleged trademark infringement. So it turns out that some 'clever' chap has managed to trademark the word 'NATO' for watch and watchstrap related products. So a NATO strap in the USA can't be called a NATO Strap unless you have permission to use the name from the trademark owner. I know, right?
The guy who owns the trademark is Ron E Sabo through his company International Watchman Inc and he has successfully defended his trademark for the last 20 years from lots of watchstrap makers and sellers in the USA and he has sued them and won.
Good or bad and whether you agree with it or not, its pretty clear that we cannot trade in the USA unless we pay this guy.
Also because the word NATO is in our domain name even though we are a UK company and the trademark is for the USA only, if we continue to trade under the name NATOSTRAPSTORE he can attempt to sue us and Shopify could close us down.
So today we very sadly have to say goodbye to our U.S customers as we can no longer sell in the USA unless we pay Ron. E Sabo of Brunswick, Ohio money.
Further to that we have had to change the name of the store and the domain to NOTOSTRAPSTORE.
So we can continue to sell NATO straps in the UK and worldwide but not in the USA.
Thanks for bearing with us during this very stressful time
Kristian

Think the MoD might have something to say about that.

Why is MOD NATO, if so i missed something in my 30+ years.

Or did MOD produce and name the strap NATO

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I see similarly that NATO and N.A.T.O has been taken by Watchgecko in the UK: https://trademarks.ipo.gov.uk/ipo-tm.../UK00002614162

I see lots of people in the UK sell NATO straps, I'm assuming this guy doesn't chase people with lawyers though.

Seems a crap law when someone can just steal a descriptive name that didn't really belong to them.

This pr1k has been at this for years.
I believe Eddie has had a run in with him previously.
Not sure US trademark law would be enforceable here on such a product but I am not a lawyer.

https://cheapestnatostraps.com have rebranded to CNS at https://cnswatchbands.com/ apparently being hassled by this delightful excuse for a troll - I'm all for people and companies being able to protect their good name, but being able to register names that are nothing to do with you and the courts siding with the trolls is infuriating.

See also US software patents, patent applications and the complete failure of prior art research or obviousness for a similarly irksome situation.

https://www.reddit.com/r/Watches/com..._a_nato_strap/

I haven't looked for court documents, but some pretty damming statements there. If true, a fairly unpleasant individual.

Classic example of a 'trademark squatter'.

In the US the law is 'first-to-use', so if he can evidence first-use in the US, it's defensibly his.

In Europe, it's 'first-to-file', so again if he registered the trademark first, same story.

Checking his website, it's no more than a Web 1.0 dead-end placeholder, so he's obviously extorting legitimate users while not actually using it himself.

This isn't remotely my area of expertise, but common-sense suggests NATO / N.A.T.O. ought to be a term so widely known and used that no-one should be able to register it as an exclusive trademark, but I have no idea to what extent these things are contextual in different nations.

The likes of NASA have taken ownership of their brand and control its licensing - presumably on generous terms given how widely it's used by small companies - so it somewhat amazes that NATO appears not to have done.

Its obviously a growing industry! I'm aware of a guy named Frank Zwecker who recently trademarked the phrase "remove before flight" and pursues those who sell items with that branding despite the fact that such products have been around for decades prior to his TM. Very distasteful business

With Hodinkee being US based, a large retailer and very well capitalised, it would be nice if they decided to challenge this inappropriate trademark as a service to watch nerds.

D


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Didn't this also happen with the term "rose gold"?

I remember this ridiculousness effected Toxic NATOS a few years back and they had to change names.

Quote:

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Originally Posted by Christian

I remember the RAF attempted to trademark it's roundel in the clothing sector. Fought successfully by Lambretta on the basis that for clothes, the public associated the roundel with Lambretta.

What would happen if NATO actually cared and said "that's our name, it describes a watch strap the military first issued, we want the trademark'?

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Years ago Lambretta clothing tried to stop a Lambretta owners club having Lambretta on their T-shirts saying they owned the rights to use the name on clothing. Lambretta owners pointed out that they were the reason the name and value of the brand existed in the first place and they backed down. Still not forgiven by many Lambretta owners.

In French and in Spanish at least NATO is known as OTAN (Organisation du Traité de l’Atlantique Nord). Maybe that could work ?

Just do not buy from/in the USA?.

Omega sell them as “NATO straps” - be interesting to see whether this Sabo chap feels the need to pursue them. I wonder if his lawyers are as well funded as theirs…

I suspect he is mainly in the business of threatening letters rather than actually going to litigation. The threat of it would likely be enough to dissuade small businesses (unless exceptionally bloody-minded :wink-new:) to back down.

Reminds me of the Broadarrow saga - So sad :(

Seems he has been doing this for quite sometime best to remind everyone on intervals of his shady practices.

https://www.watchuseek.com/threads/i...-nato.3028082/

Some eye-opening stuff in those threads! Didn't realise he was a sex-offender.

Seems like his offense must be 'expired' under US law, as he's no longer on the register (https://www.nsopw.gov/), but I grabbed a screenshot of his former entry, just so validation is available here, too (i.e. we're not slandering him) -

https://i.postimg.cc/QdMvc9JH/NATO-I...-Sabo-pedo.jpg


Lovely person...

Quote:

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Originally Posted by Christian

I remember the RAF attempted to trademark it's roundel in the clothing sector. Fought successfully by Lambretta on the basis that for clothes, the public associated the roundel with Lambretta.

What would happen if NATO actually cared and said "that's our name, it describes a watch strap the military first issued, we want the trademark'?

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https://www.nato.int/cps/en/natohq/d...ectedLocale=en

Quote:

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Originally Posted by Rev-O

https://www.nato.int/cps/en/natohq/d...ectedLocale=en

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Good spot!

Quote:

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Originally Posted by Rev-O

https://www.nato.int/cps/en/natohq/d...ectedLocale=en

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Strange that even the horse's mouth doesn't have a clue. Why do they show a pic of a 5-ring Zulu and not a NATO? Very odd.

Here's the list of 579 businesses being pursued in the Florida Courts for Trademark Infringement

file:///Users/gary/Downloads/DE%2000...0_A_%20(1).pdf

Whilst the trademark is a US one and on the whole does not affect any business outside the US, you are in breach of it if you sell a single product in to the US, you can use the name without any repercussions.

International Watchman is currently seeking $2.25 million ( you read that right ) per product sold per business !!

In the RN they were never known as NATOs but as Pusser’s watch straps. Perhaps someone should trademark that…

I sell Phoenix NATOs on eBay. Same guy has had my auctions delisted. Someone is Australia has done the same. I just stopped shipping to both

Interestingly, as an aside, I send more to Japan than the rest of the world combined

There might some news about this soon.

Fingers crossed.

I assumed International Watchman was the Australian guy. It seems not. There there is another guy with a 'NATO' trademark for Australia, Peter Michael, who goes around requesting listings on ebay be removed with the word NATO if they are being sold in Australia or being shipped to Australia. He told me as long as I removed Australia from shipping destinations I'd be fine but it seems I have to exclude the USA as well lol....ridiculous.

http://www.ipaustralia.com.au/applic...marks/1542517/