CineStill Trademark Statement and Policy


[UPDATE 10.18.23]

Trademark Statement

This message goes out to the film photography community that we continue to serve. Over the past week, we have listened and been slow to react, always following our core values. We understand the concerns some have with our Trademark Policy and would like to clarify our practices.

First of all, we would like to address recent statements made on the catlabsblog blog post regarding a supposed lawsuit. We want to make it unequivocally clear that there is no truth to these claims; CineStill has not initiated any litigation against them or any other small businesses, despite their efforts to bait us into a legal dispute. These claims were fabricated for their own gain and we will not stand for false accusations.

While we are glad to see that several independent news outlets, photographers, and other businesses have reinforced the reality that CineStill has never sued a single person or business, weā€™ve noticed that one major point of contention remains; which revolves around our good-faith decision to register our trademarks. A decision not based on what they are worth to us, but rather what they are worth as product source identifiers to consumers and the community. We hope this candid statement provides some context to our original decision to register our two word marks, and our obligations to protect those trademarks from recent infringements.

CineStillā€™s Trademark History

Intellectual Property

According to the United States Patent and Trademark Office, ā€œYou become a trademark owner as soon as you start using your trademark with your goods or services.ā€

We came up with the brand name ā€œCineStillā€ early on during the exploratory phase of R&D in 2012. ā€œCine filmā€ was commonly known as small-format motion picture film, like Super 8 and 16mm. Our goal was to bring motion picture technology to the small-scale of single-frame ā€Stillā€ photography; hence ā€œCineStill.ā€ The decision to market our first film product at a suggested exposure index of 800 (even though the emulsion it was based on was originally designed asĀ EI 500) under incandescent light, was made through a careful balancing of the characteristics we were looking for when processed in C-41 chemistry, namely good shadow detail and moderate amounts of halation (the unique visual effect most associated with CineStill color films). Comparing the results of rating the film anywhere between 200 and 1000 (without push processing), we felt that our film performed to our liking atĀ EI 800. Since another manufacturer abandoned the trademark in 2004, use of ā€œ800Tā€ as a brand identifier was unique in the photographic market at the time, and we started using it to market our film in 2013.

Established in Commerce

In the years following the commercial launch of CineStillā€™s 800T brand, several other businesses around the world were inspired to try to replicate something similar, by simply washing off the remjet layer from existing motion picture film stocks prior to exposure, with varying unsuccessful results.

Removing the remjet layer from motion picture film without damaging it (contaminating the emulsion, fogging, or decreasing the effective sensitivity, etc.) is very difficult. We invested in and wasted thousands of feet of test film before we were confident enough in the quality and stability of our film to sell it to the public. Unfortunately, similar products released by other companies at that time were substantially inferior in quality to CineStillā€™s, and eventually each of these products were discontinued by the companies making them. There was also an unfortunate negative effect on our reputation and the perceived quality of our film, based on negative experiences from users and labs with these other films and how they were marketed as similar to CineStillā€™s films. For a certain amount of time, some photographers and labs thought that all film products made from motion picture film were of poor quality, and many labs expressed concern about or downright refused to process any film with motion picture origins (CineStillā€™s 800T brand included) for fear of damaging their machines or upsetting customers.

From the beginning, CineStill has opted to not publish the patent pending for our premoval process, which could hinder others from inventing on their own and being entrepreneurs in the analog film industry. Like us, the goal of many other businesses is to make film more accessible to more photographers, and we have always supported that.Ā OurĀ process remains a trade secret, and though no other company has been able to successfully bring a comparable product to market for nearly 10 years, anyone is still free to try to find a way to emulate the results.

Secondary Meaning

It took many years of positive user experience, educating the market, and highly refined quality control practices to overcome negative perceptions and differentiate CineStillā€™s 800T brand from its early competitors as a high quality, reliable film product. And after at least five years (now, over a decade) of substantially exclusive and continuous use in the industry, the term ā€œ800Tā€ had become uniquely associated with our brand, characteristics, and quality. ā€œ800Tā€ went beyond just being suggestive, and took on a legal secondary meaning. If you were to ask someone about ā€œ800Tā€ film or ā€œ800Tungstenā€ film, it was understood that you were talking about CineStillā€™s film, not any other still film product; and definitely not the much older product for the motion picture industry, that had been long discontinued and whose 800T trademark had been abandoned. Our film wasnā€™t even based on the discontinued one.

Our concerns were that the usage of ā€œ800Tā€ to identify other products would lead to confusion for the consumer, which is the basic definition of actionable trademark infringement; with dissatisfied consumers (justifiably but incorrectly) leveraging complaints about ā€œ800Tā€ and wrongly associate them with CineStillā€™s 800T film. Similarly, if a lab were to accept a roll of 800T film from another manufacturer who hadnā€™t properly removed the remjet from motion picture film (causing damage to their processing machines), processing becomes less accessible to the greater community and damages CineStillā€™s reputation and business.

Registering Trademarks

It was at this point that we began consulting with a trademark lawyer in 2020 and we were advised to register both our company name and the name of our flagship product, both of which had been in use to identify our products for the previous seven years. Registering and publishing the word marks ā€CineStillā€ and ā€œ800Tā€ was not done to stifle competition, but rather to inform others looking for unique identifiers to avoid interruption in bringing their product to market. This also ensures that the reputation of our brands did not suffer when customers or labs encountered issues with products identified as ā€œCineStillā€ or ā€œ800Tā€ from sources other than CineStill, Inc. Since ā€œ800Tā€ and ā€œ800Tungstenā€ specifically had gained a secondary meaning in commerce and were exclusively tied to our brand, we were advised to register both CINESTILL and 800T as unique word marks. Being years removed from a ā€˜merely descriptiveā€™ usage, while being wholly exclusive to a singular product, the U.S. Patent and Trademark Office registered CINESTILL and 800T as trademarks of CineStill, Inc.

Trademark Protection

Other companies are of course welcome to release products that are 800 ISO and/or tungsten-balanced, and use words such as ā€œcinema,ā€ ā€œtungstenā€, or ā€œ800ā€, as many of the repackaged films out of China have in the past couple years. Naturally, we are curious of the original source and methods of respooling, but also supportive to see more film available for small businesses and photographers. In many cases, these non-infringing brands have been able to satisfy the needs of film shooters living in regions of the world that have been difficult to reach by other companies, including ours. We are still a small company and getting our film across the world while maintaining supply for the markets we currently serve is a difficult thing. Making film more accessible to more people is a good thing for the whole film community, and this has always been our shared goal since joining the industry. The release of many of these films also came at a time of significant material price increases and industry-wide shortages of color negative film, which made them a welcome addition at a time of scarcity.

It was only recently that some films were repackaged and named ā€œ800Tā€ or even used CineStill trade dress. Product listings also specifically mentioned ā€œCineStill 800Tā€ in describing and marketing those infringing products for sale. Consumersā€™ searches for the trademarked ā€œCineStillā€ or ā€œ800Tā€ phrases would bring up these products. This is exactly the kind of confusion trademarks were intended to prevent and we were obligated to respond.

We could not find the origin of these products that infringed our trademarks but we took our counselā€™s advice and successfully solved the issues without legal action. We preferred to communicate privately and cordially with the respoolers and sellers of these films. CineStillā€™s team first sent courtesy notices via email, not cease and desist letters, to apparent trademark infringers to address concerns.Ā Only two businesses demanded that our legal counsel contact theirs directly. Per their request our trademark lawyer provided a Cease and Desist letter, which is a customary practice for lawyers to notify infringing parties, even though it is not legally binding. Contrary to claims, CineStill has not yet sued a single company. It was, and is, our goal to resolve any disputes amicably and professionally. For those we contacted, we havenā€™t heard from any of them since they corrected the confusingly similar product names and web listings, and/or agreed to sell-off periods. We honestly thought any issues were settled through compromise a while ago.

Current Controversy

Infringing and Non-Infringing Products

Last year a wave ofĀ genericĀ (not using the trademarks or trade dress of CineStill),Ā knockoff (using confusingly similar trademarks and/or trade dress) and counterfeitĀ (using identical trademarks and/or trade dress) imitation products started popping up in China. We purchased samples and began testing them for market research. Some of them turned out to just be respooled leftover motion picture film, but a few proved to have the remjet removed prior to exposure. Our testing identified a range of issues, including chemical contamination, rem-jet embedded into the emulsion, reduced film speed, and fogging. Although they were spooled in different 135 cassettes with different designs and materials used, the one thing these films had in common was damage in a pattern which signified that they were all modified by the same source and concluded that they were from a single unknown origin.

When these films eventually began to make their way into the US and Europe, some of them were infringing or diluting our registered trademarks. Although many were repackaged by companies that chose to fairly brand them with distinctive product identifiers, search engines aiding consumers to identify and distinguish CineStill goods were yielding dozens of results for ā€œCineStillā€ and ā€œ800T from listings that were using our trademarks to market the products. Some went as far as using our marks on the packaging and titles, while others were listing CineStillā€™s product identifiers for SEO.

We want to be clear, we have not claimed to own trademarks for the word ā€œtungstenā€ or the number ā€œ800.ā€ Nor do we claim that they cannot be used to describe other color films.

Legal Obligation to Protect

Early this year our legal counsel recommended that we take appropriate and customary steps to protect our trademarks. It is something that all trademark owners are obliged to do. Under trademark law, a mark that is not protected against dilution and infringement may eventually lose its distinctiveness as a source identifier. So we began reaching out to our resale customers to try to find out how to contact the parties responsible for the films using CineStill product identifiers, while requesting privately that they do not use our trademarks without permission and suggesting alternate unique titles and descriptors to avoid confusion for consumers and encourage fair competition.

We were essentially asking our colleagues to play by the same rules we are, by not using product source identifiers that are currently in use without permission. We were not attacking anyone or taking legal action, just providing courtesy notices (not cease and desist letters) to ensure that distinctive product source identifiers are used to distinguish the products offered by other companies. Having unique product identifiers that are not confusingly similar to the trademarks used by others not only helps the consumer, but also the small businesses who do not want to be associated with reputation and quality of a 3rd party for which they are not responsible.

When we had trouble getting ahold of some of the resellers through various platforms we were advised to notify the service providers through their intellectual property programs, so that they could inform the parties to correct their listings and marketing, and to contact us to help resolve any issues privately. It is our goal to avoid conflict and legal action while protecting our trademarks as we are advised to by our legal counsel.

Cooperating, Compromising, and Coexisting

Having alternative products that can be manufactured in another country makes film more accessible, and a rising tide raises all ships. We have great relationships with many other manufacturers, distributors and retailers around the world, and we want to continue to build this niche industry to better serve the consumer.

So far we have settled any issues privately with as little inconvenience or business interruption as possible through courtesy notices and offers to compromise with generous sell-off periods and zero punitive financial liability. We did this privately to clear up any misunderstanding. Only two individuals refused to communicate with us and demanded our lawyer to talk to their lawyers. We can only speak to these confidential and privileged interactions by saying that they were settled with a simple change of trademark, title and/or product description to not contain ā€œCineStillā€ or ā€œ800Tā€. We have no ill-intent towards others providing more film to more photographers. These other tungsten-balanced and/or 800 ISO films will continue to exist with their own distinctive product identifiers and trade dress.

We are disappointed to see false information spread about CineStill in a community that we have been so fortunate to serve for many years. We are a small business as well, made up of passionate analog photographers and enthusiasts, and are merely doing our best to protect our brand and create products, tools, and resources that benefit the community.

Our Response

We have heard you. We recognize that our communications with small film retailers and film brands about the products they were selling and the content of their product listings could be interpreted as inconvenient and frustrating, or even intimidating at worst, and for that we apologize, as that was not at all our intention. With our resources and experience, we did the best that we could with the tools that we had and are always striving to do better.

We remain committed to working with partners, retailers, and other small film brands on suggesting alternate titles and descriptors, ensuring that we explore all possibilities and find the most suitable options. We have already compromised to limit the impact on all parties involved in the sale of infringing products. The collaborative nature of our interactions with an abundance of retailers and film brands over the course of our history serves as an example of good faith in the face of mischaracterization. At the core of our values is the recognition that film retailers are the lifeblood of both the community and the industry. We take great pride in working with and supporting film retailers. They are the driving force behind the vibrant film community that we know and love.

Thank you to everyone who has supported us from the beginning, from our partners, dealers, customers, and friends. For checking in with our team, sending nice and encouraging messages, sharing beautiful images made on CineStill, and allowing us time to clarify our position.

So many of you have even asked how you can support us during this time. Hereā€™s how:

Keep shooting film. It doesnā€™t even need to just be our film. Any film. This is a medium that we truly love ā€” thatā€™s why we started the company. Thatā€™s why weā€™ll keep working to make film and film products more available and more accessible for beginners, experts, professionals, and everyone in between.

We hope that this statement provides some context to our decision to register CINESTILL and 800T as trademarks. We understand and respect any differences of opinion that people may still have. We will continue to work every day to channel our efforts into helping demystify the modern analog photography workflow. We strive to foster a supportive and diverse community where photographers can connect, share, and learn from one another. As always, we are here for the community and are eternally excited to share whatā€™s next.

Yours in analog,

The CineStill Team

[UPDATED 10.18.23]

Ā 


Original Policy

CineStill is the exclusive owner of the rights in and to various registered and common-law trademarks and brands as used for photographic film, processing chemicals and equipment and has also obtained trademark registrations in the U.S. Patent and Trademark Office, for international classes in both word and design mark formats.

We are most commonly identified as CINESTILLĀ®, but all of our product identifiers, name brands, designs and slogans, which identify CineStillā€™s goods or services, are established trademarks. A trademark can be any word, phrase, symbol, design, or a combination of these things that is used to identify CineStillā€™s goods or services. They are how customers recognize CineStill products in the marketplace and distinguish them from other sources.

A CineStill trademark becomes protected as soon as we start using it with CineStill goods or services. We establish rights in our trademarks by using them, and they have become distinctive through CineStillā€™s substantially exclusive and continuous use in commerce. Registering a trademark establishes a legal decision that would otherwise be litigated upon infringement. Both the courts and internet service providers such as Shopify, eBay, Alibaba and Google recognize the registration of a mark on the Principal Register as presumed proof of ownership when deciding a dispute about trademark rights. A registered mark was verified through registration, but any distinctive mark established in the marketplace is protected by common-law.

Although some suggestive trademarks could be construed as eluding to certain uses of the goods, they donā€™t outright describe them. They merely correlate with uses of the product once one becomes familiar with the product. Consider NETFLIX, in the ā€œvideo streaming contentā€ category, which suggests a service that provides movies and TV shows to watch through the internet, but it doesn't directly describe the service. Suggestive trademarks suggest a quality or qualities of the product through the use of imagination, thought, and perception.ā€Ā RiseandShine Corp. v. PepsiCo, Inc., 41 F.4th 112, 121 (2d Cir. 2022). Only ā€œarbitrary and fancifulā€ marks rank higher than suggestive marks on the scale used by the courts to assess the strength of a trademark. Even a mark that is highly suggestive or descriptive (comprised of commonly used descriptive terms for a category or qualities of the product) may be registered if it has acquired distinctiveness (secondary meaning) through five years of substantially exclusive and continuous use in commerce under Ā§2(f) of the Trademark Act.

A trademark infringement is a use that is likely to confuse any customers to wrongly believe that the products/services offered by another company originate with and/or are otherwise related to CineStill. Any confusingly similar variation on our trademarks, including any of our product brandnames or phrases, used by third-parties in commerce which could be perceived as a trademark, portion of a trademark, name, title, or source-indicator are infringements. We donā€™t have a problem with other products existing or more tools being available for the community, however others just canā€™t be benefiting from the goodwill of our established trademarks and product quality, diluting the reputation of our trademarks.

Additionally any misleading and unlawful comparative advertising takes unfair advantage of the reputation of the trademarks, trade names or designations of origin, since it does not compare like-for-like products and fails to take into account the provenance and quality of the products compared. Consumers searching for ā€œCineStill 800T filmā€ could mistakenly purchase a product (perceived or interpreted by a consumer or a search engine aiding a consumer to identify and distinguish CineStill goods) under the assumption that CineStill is the original source of the product, and thus associate itā€™s potentially inferior or different qualities (such as defects, lower effective film speed or cassette design) with 800TĀ® and CINESTILLĀ®.

It is acceptable to use generic descriptors which primary meaning is understood and not secondarily used to identify CineStill products as long as they are not displayed as a trademark ā€“ e.g. ā€œcinema filmā€ or ā€œmotion picture filmā€ would be okay, and listing ā€œISO 800ā€, ā€œ3200Kā€, or ā€œtungsten-balancedā€ in separate places on the packaging or description would be fine, as long as the mark is not confusingly similar to or paired togeather with any variation of the marks owned by CineStill.

Our policy is to ensure that distinctive product source identifiers are used to distinguish the different products offered to consumers, in order to better serve the film photography community. We have no ill-intent towards others providing more film to more photographers. It is our goal to avoid conflict and legal action while protecting our trademarks, through the most efficient and gracious methods available.

Ā 

Trademark Examples:

Trademark: CineStillĀ®

Descriptors: Motion picture film for still photographers

CINESTILLĀ® is a suggestive trademark, comprised of the wordsĀ CINEĀ (deriving from the Greek "kine" for motion) andĀ STILLĀ (from aĀ film STILLĀ photograph taken on the set of a movie or TV show during production). It may seem like an oxymoron but it implies distinction from either meaning.

ā€œCINE filmā€ is the term commonly used in English and historically in the US to refer to 8mm, and 16mm home movie film formats. It is not used to refer to larger professional cinema formats such as 35mm or 65mm film. "Movie film" is the common informal term for "motion picture film", the standard formal way of referring to 35 mm or 65 mm cinema film throughout the industry. ThereforeĀ ā€œCINEā€Ā has acquired secondary meaning in the photography market (in addition to its use as an abbreviated version of ā€œCinemaā€ for smaller motion picture formats) as a nickname for CineStill films, and has become somewhat distinctive through CineStillā€™s substantially exclusive and continuous use in commerce.

Although CINESTILLĀ® film coexists with other motion picture based film larger than 16mm in the photography market, those products would not be accurately described as "Cine filmā€ (benefiting from the goodwill CineStill has generated around the phrase). Instead, the standard way of referring to these types of films throughout the industry is as "motion picture film.ā€

Infringement:

Name: Cinestill200
Descriptors: 35mm Tungsten negative film

Acceptable:

Name: CINEMAĀ 200 COLOUR FILM
Descriptors: Movie film ready to shoot your masterpiece

Name: FLIXPIX
Descriptors: Color Negative Motion Picture Film For Photography

Name: FPP CINE16 (Actual ā€œCineā€ film)
Descriptors: BW NEGATIVE 100 ISO 16mm home
movie film

Ā 

Trademark: 800TĀ®

Descriptors: Color film for low light

800TĀ® and the word mark 800TUNGSTENā„¢ are suggestive trademarks in connection with high-speed, cool-balanced film in the ā€œcolor-negativeā€ category.Ā The number ā€œ800ā€ suggests setting the light meter or camera to a high speed exposure index (EI800), and the mark ā€œTā€ or ā€œTUNGSTENā€ suggests the cool color temperature between about 2500-4000 degrees Kelvin (for the light emitted by the chemical elementĀ tungsten, or wolfram, in typical incandescent light bulbs). The trademark doesnā€™t state that it is ā€œISO 800-speedā€ or ā€œ3200Kelvin color-balanceā€ outright. It hints at the nature or quality of the product, but requires some additional information or imagination to understand the connection between the mark and the product. 800TĀ® could just as easily suggest an emulsion sensitive to the near infrared light spectrum (800 nm wavelength) with tabular silver halides (T-grain).

Although 800TĀ® color negative film now coexists with other high-speed 3200K-balanced color negative films in the market, no product had previously been described as 800TUNGSTENā„¢. Instead, the standard ways of referring to these types of color negative films throughout the industry are as "high-speed," ā€œ800 ISO,ā€ ā€œtungsten-balanced,ā€ or ā€œ3200K-balanced.ā€ The only reason that other products could benefit from using 800TĀ® or 800TUNGSTENā„¢ as descriptors is because consumers are familiar with what 800TUNGSTENā„¢ is (and itā€™s distinctive qualities), due to CineStillā€™s more thanĀ five years of substantially exclusive and continuous use in commerce.

By reason ofĀ theirĀ continuousĀ and exclusiveĀ use in interstate commerce, since at least as early as July 16, 2013, theĀ marksĀ haveĀ acquired secondary meaning in the market for photographic film. The valuable goodwill and reputation in the marksĀ have accrued exclusively to CineStill over a decade of use. Additionally, registration of 800TUNGSTENā„¢ is not necessary since wheneverĀ 800TUNGSTENĀ is used, the 800TĀ®Ā word mark is entirely contained within 800TUNGSTENā„¢.

Infringement:

Name: 800Ā TUNGSTEN
Descriptors: 35mm Color Negative Film 36EXP

Acceptable:

Name: COLOR NEGATIVE 800
Descriptors: 35mm film, 36 Exposures, 3 Pack

Name: 800WOLFRAM
Descriptors: Color Negative Film 3200K

Name: HS3200
Descriptors: 135-36exp color negative film, Tungsten Balanced, ISO 640

Ā 

External Trademark Example:

Trademark: VITAMINWATERĀ®

Descriptors: Nutrient enhanced water beverage

VITAMINWATERĀ® is a highly descriptive trademark in connection with WATERĀ infused with VITAMINS, which has acquired secondary meaning and has become distinctive through its substantially exclusive and continuous use in commerce. Although VITAMINWATERĀ® enhanced water products now coexist with other enhanced waters in the market (including SOBE LIFEWATER, PROPEL FITNESS WATER, and SNAPPLE ANTIOXIDANT WATER), none of those competitors describe their product as "vitamin water." Instead, the standard way of referring to this category of beverages throughout the industry is as "enhanced waters."

Infringement:

Name: VH2OĀ VITAMIN WATER
Descriptors: Nutritionally fortified beverages

Acceptable:

Name: CORE HYDRATION+
Descriptors: Nutrient Enhanced Water

Name:Ā ALIVE WELLNESS WATER
Descriptors:Ā Vitamin enhanced water beverage

Name:Ā LIFEWTR
Descriptors:Ā Whole body hydration
(after PepsiCo withdrew the packaging that copied the distinctive appearance of Vitamin Water's packaging,Ā which confused consumers as to the source of Life Water)