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Against my better judgment, this is what I think about this lawsuit from a practical and legal aspect.

Some here have been arguing that "Oyster" itself shouldn't be something that is trademarked. Maybe, but from a legal aspect, it's a perfectly valid trademark. If Rolex was an oyster processing company literally selling oysters, the trademark office probably wouldn't have granted Rolex a trademark on the word "Oyster." It would be deemed "merely descriptive" or "generic" and from a trademark standpoint, this wouldn't make "oyster" trademarkable (new word).

However, in the context of a specific type of watch case, developed, manufactured, and used to market and sell a particular type of watch, the word "Oyster" is very much trademarkable as a word that is more than descriptive. It's "distinctive" or unique. So long as Rolex was the first to try to get "oyster" trademarked, it's absolutely completely valid.

The same argument would go for "Apple." Yes, an apple is an apple, and if "Apple" was a fruit company, more than likely, it would not have been granted the trademark on the word. But Apple is not a fruit company. It's a computer company. Similarly, Apple Records was granted a trademark to the Beatles (FYI, there was a lawsuit between Apple Records and Apple, Inc. once Apple started getting into selling music....not making music....merely selling music. It went on for years and years and finally settled, on terms I forget).

Once a valid trademark is issued to a owner, one of the absolutely necessary obligations of the trademark owner is to "enforce" their trademark. In other words, if the owner does not take steps to enforce and protect their trademark, the owner can actually lose their ability to enforce that trademark. In effect, the owner has let their trademark lapse. The owner would then be unable to enforce their trademark rights against any potential infringer. The concept is called laches, and many trademarks have been lost by their owners because of this.

For Rolex, it would be devastating to lose Oyster. It's been so much a part of their brand, that the idea they would lose it, however small, would be a marketing nightmare.

So here's the dilemma. You have a demonstrably valuable trademark in "Oyster." You have a duty and obligation to enforce that trademark or else lose it. What do you do?

If you selectively enforce your trademark, the next company to violate your trademark...especially one with deep pockets...would gladly go to court and say "Hey, look at all these examples where you did not enforce your trademark.....why are you extorting me....because I have deep pockets? That's not fair. This is the very reason we have laches in law. The law does not bother with parties that themselves don't seem to care about their commercial rights."

So selectively enforcing your trademark rights can put you in deep trouble down the road with respect to anyone else looking to use your trademarked word.

So the safe thing to do for any company that has a valid trademark is to enforce it wherever and whenever you see a possible violation. It's a policy born of the desire to keep your trademark rights alive.

Now you come against some mom & pop shop making a wall clock that uses the word "oyster." What do you do?

You tell them to stop unless you pay Rolex for the right to use that word. If I was Rolex, I would settle with the company with some really small, nominal licensing fee to use that word. In the licensing agreement, I would limit the use of the word "oyster" for wall clocks only used primarily as a learning tool for children, and not in anything else, whether it be T-shirts or the like, unless they were willing to pay an additional fee for the use of the word in marketing materials.


The issue here, for me at least, is not that Rolex is enforcing their use of the word "Oyster." To me it's that the reporter here is trying to make this into a David vs. Goliath thing, and it isn't. Rolex just can't let these things go, and as things go, this is probably 1 in 10,000 violations of trademarks that Rolex experiences per year. For some reason, this one got press because it's a small company making a children's device.

Make no mistake 99.99% of these cases settle because both parties don't want to spend $1.5M each to get to the first stage of a litigation. It's better, easier, simpler to pay the nominal fee or change the name.

BTW, from what I read, Oyster & Pop was told that using "Oyster" in the category of timekeeping devices would present problems. Oyster & Pop decided to get cute and instead use Oyster in the "children's toys" or "educational devices" category. So O&P had some inkling this could be a problem and went forward anyway.

Anyway, I think Rolex is being heavy handed for sure, but I can't blame them for trying to enforce their trademark. But I really do hate this David and Goliath presentation of the issue. It's not accurate nor fair. One can argue both parties deserve bad publicity for their actions. I don't even think "Oyster" is trademarkable if it's merely the name of the town, but whatever.

Now for all you people now buying this clock as a strike against Rolex, I think Rolex would say you are just proving the point. There is now a whole category of people now buying the wall clock with "Oyster" on it, specifically for the purpose of giving to the man....using it as your wall clock, and not necessarily to use it as an educational toy. It's become a novelty item beyond it's use as an educational product.

BTW, I despise Rolex the watch company for all their AD and limited supply shenanigans. I hate the thought of Rolex as a company that has, in my mind, single handedly destroyed the enthusiast watch collecting environment. I separate those thoughts from their efforts to protect what they own.

You want someone to be angry at, flame Disney.

· Registered
2,046 Posts
This doesn't prove Rolex's point at all. Rolex has stated, through their lawyers, that people will buy these thinking that they are made by Rolex. People are certainly not doing that here.
Confusion is not the only thing a trademark infringer can do. The trademark owner must also defend against trademark "dilution" which is the element being raised here.

Trademark "dilution" is the likelihood that the use of the mark will diminish the strength or value of the trademark by reducing the mark's distinctiveness or destroying the mark's image by connecting it to something negative or devaluing. No likelihood of confusion needs to be shown.

This can happen in one instance, or over a long period of time. For example, if "oyster" is used by O&P, and then by Tonka, and then by Mattel, and then by a pizza shop, and then by [add infringer A, B and C], then the word "oyster" becomes diminished as a brand. It's not so much confusion as the fact that it's been used so many times in so many different applications, perhaps some in a negative way, that it doesn't have any value anymore.

Or it could be one bad use, like using the word "oyster" for a drug helps that helps with constipation (with a clock symbol to boot)...just a joke example by me, but I hope you see the point.

So the word "oyster" becoming somewhat of a joke because of this issue, people buying the clock just because of the word "oyster" in conjunction with the negativity brought out by this issue, is evidence that the word "oyster" is actually being devalued.

So again, the trademark owner is under a constant duty to protect their trademark or run the risk of losing their trademark or the value of their trademark.

· Registered
2,046 Posts
They make about a million watches per year.
About 15k average
15 000 000 000 per year bc they sell every watch
Figure out what tudor is doing and that's what the Hans wilsdorf foundation is raking in. Plenty of change left over to sponsor high end events like sail grand prix
I get what you are saying, but the crux is your average of $15k per watch. Remember that Rolex doesn't get the retail price of the watch. They get the price the AD paid for the watch, which has to be a significant discount to the retail price.

Plus revenue is not profit. If I were going to sponsor an event, that would have to be out of my profits if I was going to be prudent about it, not my revenue. Operating costs would have to come into play, unless sponsorship goes into the advertising and marketing budget. Either way, money has to go into current operations, material costs, labor, before sponsorships.

That being said, yes, the Hans Wildorf trust is not hurting for money.
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