Fuji looses Trademark suit

Nashville, TN – U. S. District Court Judge William J. Haynes, JR dismissed with prejudice trademark claims Fuji Kogyo Company of Japan had filed against Amtak Ltd. of Harwich, MA concerning the N, SV, LV and LR style ceramic rod guides. The Judge also cancelled all trademarks concerning these line guides sighting the leg and frame configurations for Fuji’s trademarks as functional therefore voiding any claim to a trademark.

This proves what Amtak claimed all along that this was an attempt by Fuji to extend their expired patents to squash legitimate competition here and abroad. Justice prevailed and the market will benefit. We couldn’t be happier.

We had a situation here two and a half years ago where our customers were sent very intimidating letters implying the threat of a law suit if they used allegedly infringing or counterfeit guides. This situation progressed to the point where customers would not use any guide with any perceived chance of infringement. This hurt our business and our customer’s freedom of choice. Knowing that we and our customers can now conduct business in an atmosphere unencumbered by the threat of a law suit will come as a great relief to us all. We can now go back to these customers that felt threatened and get back to doing business and put this whole long and expensive episode behind us. We hope this will put an end to this type of tactic which inhibits competition and hinders free trade

For more information contact: Joe Meehan @ American Tackle Co., 8 Fourth Street, Harwich, MA 02645, 508-435-7735, joe@americantackle.us

It is a shame that a company can spend money developing products and styles that are then ripped off by other companies and the courts uphold their supposed right to do so. I'm sure the ruling was legal and everything, but it doesn't change the fact that the seats and guide frame styles used by American Tackle and everyone else is a copy of Fuji's. It may be legal, but that doesn't make it right. The market may benefit but that doesn't make it right either.

I actually like the fact that we'll stll be able to get all these guides styles from a variety of manufacturers. But I do know that the fact that all the seats and all the guides happen to LOOK like Fuji's isn't an accident. But the courts have ruled and now it's time to move on and build some rods.

Let me give you a little background you might not feel so indignant.

Fuji patented these guides starting back in the late 70's. Patents by nature protect the inventor from infringement for a finite period of time which I believe is about 14 years. These patents are based on FUNCTIONALITY not looks. After the patents EXPIRE the marketplace is free to use these designs. The law is there to promote competition and to prevent monopolies. We as Americans can understand the best marketplace is a free marketplace and this expiry promotes just that.

What Fuji attempted to do was to deny the functionality that they sighted in their patent applications and have what in effect would be a lifetime air tight patent by attempting to trademark their designs. This is the exactly what the trademark laws try to prevent. You are not supposed to be able to extend a patent by trademarking it.

The facts are the facts. Fuji has no right to these trademarks. Their patents on these guides have long since expired and we are playing by the rules.

What a country we live in. We give a Japanese firm the ability to come into our country and compete on a level playing field receive enforceable patent rights protecting them from competition for 14 years. They in turn don't allow any competition at all in Japan. American Tackle cannot send one ceramic guide of any kind into Japan. Is this fair? I don't think so and so don't a lot of other Americans trying to do business in foreign countries. This stuff goes on all the time. We bend over backwards to be fair and we get the short end of the stick in return.

I guess Fuji should drop all their blank exposed seats? They copied them. Guide rings pressed into metal frames were around decades before Fuji came out with theirs. So to think that Fuji has a cornered the market on ingenuity is a complete fallacy.

The fact is Fuji has lost any kind of edge in the market place. The quality of our components according to independent lab tests confirms we make a better product. You also now have options that never would have been dreamed of with a Fuji monopoly. You can thank the free market and the ideals that we as Americans hold dear.

Warmest regards, Joe Meehan, ATC

Some of the reply comments about are so far off base & lack the basic understanding of what occurred here they don’t dignify a comment. I just thank god we live in country ruled by laws and the courts who decide these matters. The fact is Fuji lost and many in the industry viewed their lawsuit as an attempt to corner the market by stifling competition by dragging this into the courts with the winner being the company with the deepest pockets. Fortunately, after spending millions of dollars and two plus years of time and effort defending themselves the defendants won and Fuji lost.

Furthering Fuji efforts to corner the market, Fuji reached independent and separate settlement agreements with several of the largest rod companies & big box stores in the US so that they would not have to go head-to-head with the “big boys” with big pocket books - just tackle the smaller guys if you will. Additionally, 15 other US rod manufacturers felt so strong about Fuji’s attempt to corner the market, they each voluntarily put in $10,000 each to a defense fund to bring a separate lawsuit against Fuji and their trademarks.

Fuji’s loss is the rod building industries gain in the US.

About 10 years after WWII I started building rods (oh the days of boron , metal blanks & metal guides) – guides with inserts in the metal frames were first offered by Perfection and Mildrum before Fuji was even in the picture so your point about everyone coping Fuji is not correct, they did not originate the idea of inserts others had them long before they did, Fuji is just as guilty when it comes to ripping off ideas. I am happy a US company won this and support the made in the USA idea and if not made here at least at US owned and based here in the USA.

I anit no lawyer but I do like the option of buying what I can and at a price I can afford like:
American Tackle titanium frame guides at less then half the price of Fuji’s.
Pacific Bay’s channel lock reel seat.
American Tackle’s holographic guides.
Pacific Bay’s model N stripper guides.
American Tackle’s vetree handles guides.
Pacific Bay’s nickel silver wielded metal guides & elinator roller guides.

I hate the think if Fuji won I would not of have access to products like these or the many other products these companies make and plan to support these companies with my $$ to help them offset the cost of this lawsuit and continue to give me such great options. My 2 cents.

Fuji was not suing anybody over guides in metal frames. They were suing over the copying of their EXACT frame style. If Fuji had won Nick would still have access to all of the products he mentions. He would not have had access to look alike Fuji guides made by other companies.

Again I say just because something is legal that doesn't make it right. If Fuji's designs are no big deal, then why did American Tackle and all the others knock off the Fuji designs EXACTLY. Why didn't they come up with their own unique style of frame or seat??

It will be interesting to see if someone and hopefully Fuji knocks off the new American Tackle Matrix/Vetre reel seats and handles. After all, fair is fair. I'm sure you will have no complaint if they do. Same with channel lock seats. Wonder how Pac Bay would feel if Fuji made some exact knock offs. I'm sure they wouldn't mind.

Had Fuji won, nobody would have had to stop making line guides, just those that looked like Fuji's.

The ruling did not say that other companies have not knocked off Fuji's frame styles or designs - only that the current method (Trademarks) by which Fuji was attempting to protect their styles and designs was incorrect.

Obviously, nothing is stopping other firms from developing their own frame and seat styles if they wish to do so. Over the past couple decades, many have preferred to simply copy Fuji designs in an attempt to cash in on those products' consumer acceptance and trade value. My sympathy is with Fuji, but there is a correct way to protect such things and if they didn't go about things in the correct way then there is little they can do about it now.



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Edited 1 time(s). Last edit at 05/04/2005 04:44PM by Tom Kirkman.

Hi Denny,

It sounds like no one is going to convince you that patent expiry is a good thing. I believe it promotes competition and a healthy free market.

Fuji sued over Trademark violations which were canceled by a court of law for being invalid. Fuji tried to convince the Judge there was confusion in the marketplace. Their argument was people thought they were buying Fuji when they were actually getting Amtak guides. This argument was of course absurd. The horse was well out of the barn by the time we came along. There were millions of guides in these configurations being sold other than Fuji's for twenty years. The marketplace was so diluted by this time it made no sense out of the confusion issue.

These guides have been copied from almost the beginning by Korean and Taiwanese companies. If Fuji had done the right thing as Tom had stated and defended the patents in the beginning this wouldn't even be an issue. Ironically this law suit is going to spawn a slew of new product designs which will further weaken Fuji's hold on the market. So you will in essence get what you are asking for.

Tooling for new guides is extremely expensive so I don't agree that Nick would easily be able to get anything he wanted if Fuji had won. When we started out years ago these were the only designs available to us. The buying public wanted these styles and we provided them. As the years pass and our businesses grow we will be able to design and build our own guides but in the mean time we use existing molds specifying materials.

So if you want to sit on the sidelines and root for a Japanese company to rip off an American company with a valid enforceable patent don't hold your breath. We won't be the type to sit back and whine we'll go to court and put a stop to it which is what they should have done 20 years ago.

Regards, Joe Meehan, American Tackle

The 4 guide designs Fuji was suing over represent 90% of the guides solid and therefore about 90% of the business to Pacific Bay and American Tackle - My point was if these companies lost I doubt they could afford to operate and hence make these other products we would all be stuck buying Fuji. I am happy they can sell these guides and offer rod builders alternative items that might not otherwise be available if they were not in business.

I hope someone does knock off the ATC matrix & vetree reel seats (but they will have to get around the patents) and hopefully the knock off will improve upon the original - if it does I would use it, if it do not I would use the original.

The Fuji designs were not copied EXACTLY as you say, to an untrained eye like yours they may but you need to take a closer look at them as the court has and agreed they did not copy them. I have been building rods for years and I can easily see subtle differences between guides offered by each company. Yes, to the untrained eye to over all appearance looks the same(these are the same people who call them eyes and not guides).

Just as you might think all graphite blanks would look the same from a distance, but up close each one is different. I guess you think the first company to make a graphite blank has the right to file suite every other graphite blank maker in the US? If that was the case, how many models of graphite blanks to you think we would have today? and at what price point? That's my point - and one the court agreed on, the overall guide design is FUNCTIONAL and as such can not be trademarked by one company. Competition fuels innovation, competition fuels competitive pricing and it Fuji had won I would be afraid this would not exist in the market. We should be thankful to those companies that won so that we all have a right to use what we want.

Your Monday morning lawyering exposes your basis to Fuji and minimizes issues that have taken years to work their through the courts at the costs of millions of dollars to those involved, debated by teams of lawyers, provided enough exhibits to fill a tracker trailer truck, directly involved the US Patent & Trademark Board and a Federal judge. But you are welcome to your opinion, that is what this country is about thank God.

By beating the Fuji suit, you will not have more choices, you'll have less. Now again there is no reason for the other companies to develop any new guide styles. They'll just keep making Fuji copies.

Fuji's guide styles go beyond function to a certain style and other firms copied them just as Joe mentioned. They did this to trade on the Fuji reputation. If that wasn't the case then they would have copied something else or designed their own.

What's right doesn't always involve what's best for you or me or the majority. That's what I keep hearing, that it's good Fuji lost because it's good for custom rod building and the builders will be better off in the long run. But the law should not be about that. It should be about what's right, not what decision would be best for the most people. I bet if you had a product design and somebody ripped you off with the idea that it would be best for more people that way you might not feel quite the same way.

I have no problem with Fuji losing the suit. I understand what Tom said about them not doing this the right way. But none of it changes the fact that Fuji's designs were copied. This is the game plan for the oriental manufacturers. Rip off existing product designs and trade on their reputation and style. It's happening in the clothing market, furniture, electronics and anything else you can name.

And for the record most of the guides I buy are from Pacific Bay. But I recognize where the original designs came from.

For once, a court decision that was right and favored consumers!!! My sincerest congratulations, Joe!!!! Nick is absolutely correct about the blanks. Since they all "look" the same, should no one be allowed to sell blanks except the original patent holder?? Patents are for a limited time to protect the inventor's investment and profit for a time, not to provide a lifetime monopoly.

Trademarks have noting to do with the functionality of a product

Mike

No, Nick is very much wrong. No one holds nor has ever held a patent on the "rod blank" so that is not a valid argument. If you have ever applied for a patent and understand the nature of the necessary "claims," you would see that a patent could not be granted for the basic concept of a rod blank. Certain proprietary manufacturing procedures maybe, but that's quite a bit different.

Also, courts are not supposed to favor the consumer nor anyone else for that matter. They are supposed to uphold the law. Denny is very much correct in that it is not the job of the court nor the judge to find based on who the decision will benefit the most. Decisions must be made according to what is legal. If you are going to start basing court decisions on favoring the consumer or finding for the majority or for the most economic sense, then a lot of little people are going to get trampled in the process. The reason we have patents and trademarks and copyrights is to keep this from happening.

It would appear that after Fuji's patent ran out they decided to try and trademark their guide leg design much in the way that McDonalds has trademarked the golden arches. When you see the golden arches, you think "McDonalds." Fuji claimed that when you saw their specific guide leg design you thought "Fuji."

The fault lies with the Trademark office for issuing a trademark on something that shouldn't have been trademarked. Although, I think that could be argued as well. I know when I see that guide leg design, I automatically think either "Fuji" or "Fuji copy." But I don't work at the Trademark office.

I'm sure the court found according to the law. But I guess I'm one of those that in my heart know that if I was going to design and manufacture guides I would try not to copy existing designs just out of respect for the inventor or designer. Of course, I would probably also go bust. Business is a dirty way to make a living but somebody has to do it.

Although this "suit" was heard and decided in an American court the product no matter what company name, is being produced outside the US. Atleast with Fuji you have a sensible system of guides that are limited to a extent. Instead of creating soething "better" they were copied for years then when that wasn't working colors and coatings were introduced. It is a nightmare trying to repair a rod with some of the new guides offered by Fuji's compettitors and you don't get them as quickly as they boast. Personally I think these guys that compete with Fuji are great people, but it has been my personal experience that thier products are not as cost effective and readily available as Fuji's.

I wonder if cars started off this way? Everyone copied off a Ford (it was so long ago, I forgot if Ford was actually teh first car company, maybe they "bit" off someone else who floundered?). All the car manufactureres should bow down and claim they copy the basic design of Ford. Why not make cars with 3 wheels? Why not 5?

"But the law should not be about that. It should be about what's right, not what decision would be best for the most people." - Dennis - welcome to the real world, where nothing makes sense and you just have to deal with whatever people with more money and pawer than you tell you you have to deal with.

Switch your thoughts to the drug manufacturers for a minute and think what would happen if they trademark a certain allergy pill or heart medication.When the patent runs out that opens the door for the generic manufacturers to offer the same basic pill for a fraction of the cost therefor making it affordable to those not so well off.It also saves the insurance companys some cash by requesting that a generic be prescribed when ever possible.The drug companys sometimes try to extend the patent by slightly improving the med at the end of the patent period.Even if they dont suceed with the extension the formula is kept secure until the courts decide adding to the time the company call sell exclusively and still profit.This is what makes America so great.I do feel that the inventors should prosper from their work but in time competion should should be allowed to improve affordability and function.Just thought another angle out the rod building world may make some see clearer.

Freddwhy (Rapt-Ryte)

I don't have strong feelings either way on this one (the court case) because us red necks don't know about the law. Heck, we don't have to; we never get in trouble (maybe we just don't get caught?).

I've just noticed that Fuji wasn't very yielding when it came to change.

I started building on Fuji Hardloy guides; used them for quite a few years. Then, as I learned more, I wanted to go smaller and lighter. They didn't make size 6 guide rings and size 6 ringed tip tops in their Hardloy line, so I went elsewhere. When I found what I was looking for, it also had a nice BLACK guide ring instead of the gray one. BIG appearance plus to me there. Fuji still doesn't make the Hardloy in the sizes I want and they still have the gray guide ring. Since then, the main brand of guides I buy has come out with more and more choices yet for me as a builder. It seems like every year, more changes and choices come around.

I haven't bought a Fuji guide in many, many years...

Putter
Williston, ND

Anybody can build a car and perhaps not find themselves in patent or trademark violation, but if you build a copy of a Ford Tarus (or whatever they build these days) you'd probably be in trouble. I doubt there is any patent or trademark on a "Ford," but there is likely some sort of protection on the Tarus (or whatever) body style. You can make a glass bottle and not be in trouble, but shape it to look like a Coca Cola bottle and you'll likely wind up in court.

Remember, Fuji was not suing anyone over the manufacturing of guides, but rather of manufacturing guides that look like specific Fuji guides.

The bottom line here is that many companies have copied Fuji guide styles over the years. Fuji attempted to protect some of their designs with trademarks which the court has ruled invalid. Pending some sort of appeal by Fuji, that will likely be the end of it.


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Edited 1 time(s). Last edit at 05/04/2005 09:56PM by Tom Kirkman.

What a thread!

Joe, I too love free trade. During this time of jubilation for you and your industry supported legal team I hope you can gather the strength to extend your efforts on behalf of free trade and fairness to all. Your next task shall be to defeat those who sell a completed rod, which includes fluor grade cork along with other questionable items, for the Every Day Low Advertised Price of $ 12.86 at Wally World Superstores! Yep, they even have a twill green support cloth on the butt section and made in Korea sticker. I am headed back to the store and will forward the name displayed on the highly sought after popping rod tomorrow!

As fate would have it, a guy brings one of the Korean treasures to my shop after I sent you the email this afternoon.to fix two guides. I told him he could go get a new one for what I would charge and suggested that he take the thing back and get a free one as a warranty replacement. Doing my part for world trade!

Hope the steak and salad were as usual at the Cactus!

Cold Hearted Sympathy!

Gon Fishn