Explanation Please

Havoc550

Havoc550

Joined
Oct 9, 2011
Messages
758
I am a long time collector of Cold Steel, I started in the 80's with the original Magnum Tanto and my collection exploded from there. Even though I make (amateur) and collect custom knives, I still buy Cold Steel from time to time because I still like the brand. Instead of listing the reasons I am not exactly thrilled about this "San Mai is ours" campaign, could you at least provide an explanation without closing the thread? That or lose a long time collector for good. For those of you not aware, San Mai is a process that has been around for around 1000 years, not just since 1986.

Here is the message (with some variation) that several custom knife makers are receiving:

"Dear (does not matter): I am writing to advise you that your use of the term SAN MAI in Forged in Fire S2E9 infringes on the trademark rights of Cold Steel, Inc. (Cold Steel). I understand that you may not have been aware of this trademark or of Cold Steel’s long-standing use of the name SAN MAI. Therefore, I ask that you refrain from using the term SAN MAI to refer to any knife, layered steel or related products, except in regard to the products sold by Cold Steel, Inc.
Cold Steel owns the U.S. trademark registrations referenced above and has used the trademarks SAN MAI® and SAN MAI III® in connection with knives and layered steel since at least 1986. Cold Steel owns the exclusive right to use these terms in connection with those products.

I ask that you discontinue the use of the words SAN MAI and any confusingly similar trademark, and remove any references to SAN MAI from any websites and Social Media pages within 10 days from receipt of this letter. Please also remove any references to SAN MAI in printed materials before the next print edition or version of those materials is released.
I also kindly ask that you post a retraction online regarding this error, ensuring that there is no further misunderstanding within your client or fan community. Please acknowledge receipt of this letter, and advise my team of the steps you will take to help remedy this situation.

Thank you.
Best Regards,
Lynn C. Thompson
President
Cold Steel, Inc.
1-800-255-4716"
 
Last edited:
Have you seen the trademark docs?

I ask this not because I know anything about this particular situation; but I worked in a patent/trademark/copyright law firm for a year. There are reasons why something may qualify for a trademark; and it's not as cut and dried as one might think.

Yes, it's a process. However, how many people would know that? In the market place, a person could see the words "San Mai", and easily assume "hey, that's one of those Cold Steel knives!" I'm sure you can see how that could conceivably affect their bottom line; and as a businessman, you should be able to understand their position.

If they were genuinely granted a trademark, that means the government regarded their justification as valid. If that is the case, I'm sorry....but that is our system. They beat everyone else to it; and that is generally regarded as good business. You are free to challenge the trademark office's decision, if you wish.

No one is stopping anyone from using the process; only the label. I'm sure that also factored into the decision to grant the trademark, as it is not as big an "encroachment" on the rights of others as some may think it is.
 
The US Patent and Trademark Office has three trademarks registered to Cold Steel concerning San Mai, but they all include either three waves or the roman numeral III after SAN MAI.

I just did a search on uspto.gov, and it is there. Do some people have issues with these trademarks?

EDIT: In fact, there is a disclaimer that explicitly says "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "SAN MAI" APART FROM THE MARK AS SHOWN"
It is all legitimate trademarking, and nothing registered with the office concerns the terminology.
 
Ccc said:
The US Patent and Trademark Office has three trademarks registered, but they all include either three waves or the roman numeral III after SAN MAI.

I just did a search on uspto.gov, and it is there. Do some people have issues with these trademarks?
Click to expand...

If this is the case, then it's an even more specific presentation of the word, one that likely has less to do with the process itself and more to do with the designation that Cold Steel is using. I can see why they were granted the trademark.

This is easy....come up with a way to indicate that your blade was done via the method without violating the specifics of the trademark. It should not be hard if you have the trademark stipulations.
 
If San Mai was wiped off the face of the earth knife sales wouldn't drop one tenth of a percent.
 
Kind of a moot point since the production is shutting down in Japan, unless of course Cold Steel is thinking of San Mai made in Taiwan.
 
Jonslaught said:
Listen, SAN MAI belongs to Cold Steel, alright?
Click to expand...

Nope, not alright. Do some research on San Mai and look for the links that do not have "Cold Steel" in the name (or click my link below). If you seriously think this process was invented by Cold Steel, I have no idea what to tell you. Not to be a total smart ass, but you know the tanto was around long before Cold Steel as well, correct? And before you accuse me of being a "hater" or whatever, I am sure I own more Cold Steel knives than most which is why I find this even more irritating.

I could care less about what our trademark office says, it's the act of sending small custom knife makers cease and desist letters for using the correct terms for making a certain kind of blade. The knife community is very friendly and for the most part, very tight, why start crap like this? Custom knife makers are not taking his business with their $1000+ knives and vice versa.

And seriously, the knife maker that got this specific letter talked about San Mai on Forged in Fire. No one else saw a problem with it because what he said was 100% correct. Hell, Forged in Fire has a video right now with Wil Willis explaining what San Mai is:

https://www.youtube.com/watch?v=JQS-Q3rb5H0

Maybe Lynn should tell the History channel they are wrong as well and that Cold Steel owns all the rights to a 1000 year old knife making technique. I have seen plenty of Cold Steel knockoffs that deserve their day in court and I stand behind any knife maker that challenges such fraudulent companies. This, however, is not one of those times, period.
 
Can you blame a guy like Lynn for being defensive over a sandwich, metal or otherwise?
 
Any and all information that is at my disposal regarding this matter can be found HERE
Discussion as always is very welcome, but sadly I do not have any other info to share.
I'm sorry I have no further insights regarding San Mai. If I learn more or if new info is made available to me, I'll be posting here.

I will ask that people to keep this thread polite and civil.
Thanks
 
Havoc550 said:
Nope, not alright. Do some research on San Mai and look for the links that do not have "Cold Steel" in the name (or click my link below). If you seriously think this process was invented by Cold Steel, I have no idea what to tell you. Not to be a total smart ass, but you know the tanto was around long before Cold Steel as well, correct? And before you accuse me of being a "hater" or whatever, I am sure I own more Cold Steel knives than most which is why I find this even more irritating.

I could care less about what our trademark office says, it's the act of sending small custom knife makers cease and desist letters for using the correct terms for making a certain kind of blade. The knife community is very friendly and for the most part, very tight, why start crap like this? Custom knife makers are not taking his business with their $1000+ knives and vice versa.

And seriously, the knife maker that got this specific letter talked about San Mai on Forged in Fire. No one else saw a problem with it because what he said was 100% correct. Hell, Forged in Fire has a video right now with Wil Willis explaining what San Mai is:

https://www.youtube.com/watch?v=JQS-Q3rb5H0

Maybe Lynn should tell the History channel they are wrong as well and that Cold Steel owns all the rights to a 1000 year old knife making technique. I have seen plenty of Cold Steel knockoffs that deserve their day in court and I stand behind any knife maker that challenges such fraudulent companies. This, however, is not one of those times, period.
Click to expand...

Didn't we just get finished saying that it was not the process?
 
Cold Steel Knives said:
Any and all information that is at my disposal regarding this matter can be found HERE
Discussion as always is very welcome, but sadly I do not have any other info to share.
I'm sorry I have no further insights regarding San Mai. If I learn more or if new info is made available to me, I'll be posting here.

I will ask that people to keep this thread polite and civil.
Thanks
Click to expand...

Thank you, I will check your link and keep it civil.

Jonslaught said:
Can you blame a guy like Lynn for being defensive over a sandwich, metal or otherwise?
Click to expand...

I want to laugh, but I just promised to keep it civil.

BlackKnight86 said:
Didn't we just get finished saying that it was not the process?
Click to expand...

I know it's the name and not the process, per se. So, what are custom knife makers supposed to do then when they make a San Mai blade? It's just as bad as trademarking "tamahagane", "damascus" or even the word "forge". This forged damascus blade is... NO!!! YOU CAN'T SAY THAT!! I own forge and damascus, you have to say something else. Do we see the problem here? Do we see how ridiculous this is? Keep the trademarked name, fine, whatever, but leave the other knife makers alone. It's hard enough to make a living as a custom knife maker let alone dealing with legal issues for something so irrelevant.
 
First come, first serve buddy....SAN MAI might have been around for thousands of years but no one owned the name except cold steel. i can trademark "fuck off" if i want and no one can use that word on any t-shirts or advertisements without my consent. Lynn is just being Lynn but he is right. it's as simple as that....we don't need any discussions on who can sue who or who's the jackass.
 
Ccc said:
The US Patent and Trademark Office has three trademarks registered to Cold Steel concerning San Mai, but they all include either three waves or the roman numeral III after SAN MAI.

I just did a search on uspto.gov, and it is there. Do some people have issues with these trademarks?

EDIT: In fact, there is a disclaimer that explicitly says "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "SAN MAI" APART FROM THE MARK AS SHOWN"
It is all legitimate trademarking, and nothing registered with the office concerns the terminology.
Click to expand...

Generally speaking, a trademark is quite specific and refers to pretty much exactly the word, symbol, or combination of words and symbols that are discussed and documented. It is really amazing how specific you have to get sometimes which is why companies sometimes get multiple trademarks. I have only done a few trademarks, but as I understand it, if there is a combination of words and symbols, it may have been done that way to gain the trademark and that combinatIon is specifically what is trademarked.
 
Last edited:
Havoc550 said:
I know it's the name and not the process, per se. So, what are custom knife makers supposed to do then when they make a San Mai blade? It's just as bad as trademarking "tamahagane", "damascus" or even the word "forge". This forged damascus blade is... NO!!! YOU CAN'T SAY THAT!! I own forge and damascus, you have to say something else. Do we see the problem here? Do we see how ridiculous this is? Keep the trademarked name, fine, whatever, but leave the other knife makers alone. It's hard enough to make a living as a custom knife maker let alone dealing with legal issues for something so irrelevant.
Click to expand...

I do understand the situation with small makers; the problem is, if someone has a trademark and they don't defend infringements against it, they can render it null by default, and they lose it. Cold Steel may not want to do things like that; but the consequences of not pursuing it every time can be significant. It sucks, especially with a small maker who doesn't pose an economic threat; but that is the system.

Think about it in property terms. Let's say you own a piece of property, and you get a squatter. She's a poor, pregnant single mother-to-be.......and you don't want to evict her. But if you don't, you might lose certain rights to your property. Again, it sucks....but that is how things are done these days.

A rhetorical question, if I may.....you say it's irrelevant. If you truly believe that, why are you putting up such a fight? Change the name. Or talk to Cold Steel, and work out a designation for your blades that they agree won't infringe. The first letter is an administrative formality.....it doesn't become a truly legal issue unless you ignore the request. Why tilt at windmills over an issue that you yourself call "ridiculous"?
 
BlackKnight86 said:
I do understand the situation with small makers; the problem is, if someone has a trademark and they don't defend infringements against it, they can render it null by default, and they lose it. Cold Steel may not want to do things like that; but the consequences of not pursuing it every time can be significant. It sucks, especially with a small maker who doesn't pose an economic threat; but that is the system.

Think about it in property terms. Let's say you own a piece of property, and you get a squatter. She's a poor, pregnant single mother-to-be.......and you don't want to evict her. But if you don't, you might lose certain rights to your property. Again, it sucks....but that is how things are done these days.

A rhetorical question, if I may.....you say it's irrelevant. If you truly believe that, why are you putting up such a fight? Change the name. Or talk to Cold Steel, and work out a designation for your blades that they agree won't infringe. The first letter is an administrative formality.....it doesn't become a truly legal issue unless you ignore the request. Why tilt at windmills over an issue that you yourself call "ridiculous"?
Click to expand...

Sorry to dredge this up again, but there is a distinction that is being missed in most of these posts. You are correct in your analysis if Cold Steel actually trademarked "San Mai," but patents #3540202, #3540187, and #1471971 only trademark "SAN MAI III" and two variations of "SAN MAI Ξ"

The trademark office expressly says that any use other than those are not trademarked, so I don't know why letters are being sent out about names that are NOT registered trademarks.
Cold Steel never trademarked San Mai, san mai, SAN MAI, or any other variation of the name. They only registered the words "San Mai III" and "SAN MAI Ξ"

I am no intellectual property lawyer, but the cease and desist order does not accurately convey the limits of the three registered trademarks.
 
For any of the confusion that San Mai is just a random work cold steel picked read the very first thing


http://bfy.tw/5ddX

if this be true I find it odd that cold steel claims the rights to a generic term describing how a knife is made. Perhaps I can claim the word "knife.
 
Havoc550 said:
So, what are custom knife makers supposed to do then when they make a San Mai blade? It's just as bad as trademarking "tamahagane", "damascus" or even the word "forge". This forged damascus blade is... NO!!! YOU CAN'T SAY THAT!! I own forge and damascus, you have to say something else. Do we see the problem here? Do we see how ridiculous this is? Keep the trademarked name, fine, whatever, but leave the other knife makers alone. It's hard enough to make a living as a custom knife maker let alone dealing with legal issues for something so irrelevant.
Click to expand...

What have they been doing since 1986? You act like this is a new phenomena.
 
You must log in or register to reply here.
Back
Top