Last week, reports surfaced that Cold Steel had sent letters to several knife makers over the use of the name ‘San Mai’. Since the 1980s, Cold Steel has successfully registered three US trademarks for the term San Mai, and according to the company San Mai was recognized as incontestably a distinctive trademark associated with the Cold Steel brand. Cold Steel says they have invested millions over the years promoting San Mai and bringing the name to a large international audience. The letter (see image below) informed the makers, who use the name San Mai, of the long standing trademarks and asked them to remove references to San Mai from their websites and social media within 10 days.
On the forums and in social media, enraged knife makers called Cold Steel’s letter “heavy handed” and “corporate bullying” and questioned the company’s exclusive rights to use the term. In response, this morning Lynn Thompson issued an open letter to the knife community that you can read here. The letter is an open apology to the knifemaking community, but it also reaffirms Cold Steel’s exclusive rights to the name San Mai. It’s a delicate balance between defending its trademark rights and relationship with makers and the knife community at large.
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Cold Steel just issued the following statement to KnifeNews.com including a note from Lynn Thompson:
There is a lot of confusion between the process of forging or manufacturing three-layered-steel and the name San Mai® as used in America today. These are two very different things.
It’s important to make this very clear. Cold Steel claims no ownership of a process, and is not trying to stop people from making three-layer steel knives or swords.
That is a huge misunderstanding.
However, we are asking people to respect the long standing trademark of the name San Mai® which Cold Steel has promoted for over 30 years.
Lynn first began using the name San Mai® in 1986. Cold Steel was creating a new series of blades featuring 3-layered Japanese steel and Lynn chose a cool Japanese name for that steel and for the blades featuring it. In accordance with US trademark law, he registered it with the US Trademark Office for use here in the USA.
That is the initial registration which you are referring to in your email.
Over the years Cold Steel heavily promoted San Mai® and raised awareness of both the steel and the products that featured it.
We advertised San Mai® worldwide, through magazine ads, our catalogs and our testing videos as well as at live events and trade shows.
We invested millions of dollars promoting the name San Mai® and we went on to expand upon that trademark, registering the name as well as the mark or symbol associated with Cold Steel’s San Mai®.
Cold Steel’s San Mai® became a well-known and world renowned brand, and the U.S. Trademark Office recognized San Mai® as a distinctive trademark associated with Cold Steel knives in 2008.
The Trademarks were also recognized as incontestable by the U.S. Trademark Office in 2014.
In order to retain those trademarks, and in order to expand upon them – to the extent that they are now recognized as incontestably distinctive and associated with Cold Steel – we not only had to promote them but to protect them.
To do this, we are required by law to make a reasonable effort to defend our trademarks.
Since the mid-eighties we have done so numerous times. This has included sending out letters not dissimilar to the ones that went out to a small number of makers last week.
Note from Lynn Thompson, Cold Steel Founder and President:
I have a great deal of admiration for custom makers, and it was the pioneering work of the American Bladesmith Society® that inspired me to try and push the limits of performance and durability in my own production knives. No custom bladesmith has ever been sued over the San Mai® name, and it is my sincere hope that such a drastic course of action will never occur.
The letters that were sent out were intended to politely ask people to respect my long standing trademark of the name San Mai®, something I have invested millions of dollars building, and growing for decades.
It was never my intention to appear to be intimidating members of the knife making community, and I’d like to take this opportunity to apologize sincerely to each and every bladesmith for the misunderstanding.
If anyone has any questions or concerns, I’d like to encourage them to write to me via the address below. Thank you!
Lynn C Thompson
Cold Steel Inc.
6060 Nicolle Street
Ventura CA 93003
Knife Featured in Image: Cold Steel Recon Tanto SAN MAI III