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FraudFighter wins UVF861 Trademark Case

Stephanie Cho

T5UV16_POS15FraudFighter has always had the goal of providing its clients with the best possible product at the lowest possible price. With this in mind, FraudFighter moved production of some of its products to an American-owned foreign factory back in 2003 - in order to lower production costs without sacrificing quality.

At that same time, FraudFighter redesigned its best selling counterfeit detection machine, the UV8, to accommodate higher wattage bulbs which would make the new machine more powerful. The redesigned machine was given the name “UV16” since it used two 8-watt bulbs (2 x 8 =16), while its predecessor, the UV8, used two 4-watt bulbs. The fluorescent UV bulbs used in the UV8 were given the  part number “UVF461”; while the higher wattage bulbs used in the UV16 model were given part number “UVF861” to reflect the increase in wattage from 4 watts to 8 watts.

In 2011, one customer purchased over 15,000 units of the UV16. Soon after delivery, a flood of calls came in from that company’s store locations, saying that the machines were flashing, burning, and smoking. Recognizing that this was a problem stemming from the production of the machines, FraudFighter launched an investigation to uncover the cause. After consulting with several electronics experts, the cause was pinpointed: low cost, low-quality bulbs. In essence, the factory had been acquiring cheaper, inferior bulbs in order to maximize their profits.

A meeting with the factory owner revealed that they did not consider the factory at fault for the production issues, since they were simply purchasing the bulbs from a third party provider. Accordingly, FraudFighter ended its partnership with the factory and found a new factory that was willing to guarantee production standards. The relationship with the new factory is still alive today, and is entering its 5th year.

Unfortunately, in 2011, the previous factory filed for and received a US trademark for part number “UVF861”, which led to the denial of FraudFighter’s own application for the trademark in 2012. FraudFighter attempted to directly negotiate a resolution with the factory, but no settlement was available. Failing to resolve the trademark issue firsthand, FraudFighter filed a petition with the US Patent & Trade Office to cancel the “UVF861” trademark. After 28 months of depositions and trial briefs, FraudFighter’s petition to cancel the trademark was granted. The factory appealed the decision, but was denied their appeal, giving FraudFighter the right to use UVF861 as the bulb’s part number again.

During the time that the ownership of the trademark was in question, Fraud Fighter decided to change the bulb’s part number from “UVF861” to “T5UV16-POS15”.  Although the part number seems rather odd, there is logic behind it: “T5” is the size of the bulb, and “UV16” and “POS15” are the two products that use the bulb. It should be noted that FraudFighter intends to re-file for the trademark of UVF861, so that others cannot produce similar bulbs with that part number. However, FraudFighter will not be using part number “UVF861” anymore to avoid any future confusion.

FraudFighter updated its business literature to make it as clear as possible that bulbs with part number UVF861 are no longer valid replacement bulbs for the FraudFighter UV16 and POS15 counterfeit detectors, despite the fact that markings on older models of the UV16 and the POS15 state that the UVF861 bulb is the correct replacement bulb. The use of UVF861 bulbs will not only invalidate the warranty, but may also result in a dangerous malfunction that could cause injury. Users of UV16 and POS15 machines are instructed to only purchase replacement bulbs with part number “T5UV16-POS15”.

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