You asked your legal, copyright, and trademark questions, and Jean has answered! All questions are culled from the comments section attached to the original ‘Ask Jean’ post. We invite you to ask more questions.
Jean,
We own the trademark for a fashion label in the work form and stylized form. We have been trading as this trademark for over 30 years. However recently another company released a new fashion brand with the same name except they changed one of the letters from an n to a l (the fourth letter).
Do we have grounds to sue them and make them pay financial compensation for this since our trademark covers all fashion classes, including all of those they are involved in. How is the compensation generally agreed upon, and how much should we expect?
Many thanks for your help.
JamesDear James,
Changing a letter in a name is not enough to avoid trademark infringement. It sounds like you have a very strong infringement case. If you have a federal trademark registration for your mark, you can easily stop the infringing use. If you don’t have a registration, you can still stop the use, it just requires more proof. Damages in trademark infringement are generally based on the profits from the sale of the infringing work and if you can show that the infringement was willful, those damages can be trebled. Consult a trademark lawyer to have a cease and desist letter written to the infringers and to hopefully negotiate a settlement to avoid litigation.
Best,
Jean
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license). Infringement may occur when one party, the “infringer”, uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence legal proceedings against a party which infringes its registration.
Source – http://en.wikipedia.org/wiki/Trademark_infringement
Does anyone know how to go about trademarking the name of a clothing brand? Is this something that I would need an attorney for, or can I do it myself?
Although there are many things you can do yourself, federal trademark registration is not one of them. The online sites like legalzoom or secureyourtrademark are in many cases a pennywise and pound foolish way to go. The process is not a simple one. There are many traps for the unwary and very often the application is in such terrible shape, you have to abandon it and start over. It often ends up costing way more than if it had been done right in the first place. Clothing brands are especially susceptible to problems. Contact an experienced intellectual property lawyer that handles registrations. The brand and the trademark are too important.
I want to design t-shirts using the names of baseball teams, football teams etc, i.e. Tampa Bay Rays. The only word I would be using is the single word like Rays, Yankees, Angels, Red Sox. I wouldn’t be using the full name like New York Yankees or Boston Red Sox. I would be using a different font and style from their trademark. I would be using a maltese cross and other pictures not related to the Rays to form my design. Would this be considered infringement? If so, how much do I have to change to use the word? Can they own the rights to the word even though it can have different meanings not just referring to the team?
Thanks for your time,
Victoria
The short answer is that it might well be infringing. If you sell a t-shirt in Tampa with the word Rays on it, no matter how much you don’t make it look like the Rays logos or use the Rays fonts, you are using the association with the Rays to sell the t-shirt. That’s infringing use. The same is true of any team that’s well known. These teams are also VERY protective of their trademarks–all of them. And it doesn’t matter if you take the name of the city off. The team will own the mark Red Sox as well as Boston Red Sox. You can use the words red socks to describe red socks or create a T-shirt that says Red Socks on it. But, as soon as it’s Red Sox you have a problem and you could hear from them with a cease and desist letter and you would have to stop selling them. My advice is that it’s not worth the risk.
Would you know if a single word can be trademarked if that word is already trademarked in conjunction with another word? For example can I trademark “Dapper” if there is already “Dapper Clothing”? Thanks so much.
The short answer is no. Dapper and Dapper CLothing are too close. The only way you could do it is if your identical mark is for something totally unrelated to the existing mark. So if you wanted to register Dapper for tires and there existed a registration for Dapper Clothing, it might be possible.
Jean,
Not sure if this forum is still up and running since the last post hasn’t been for over two years. Anyway, I have a trademark question if you are available.
Thanks, Brandon
I am designing and hoping to sell about 60 t-shirts this summer. I am splitting the title from a famous poem and inserting the name of an island state ferry operated by the DOT. Sounds odd but the shirt will be meaningful to the residents of the island. Any trademark issues? Thanks for your help.
Hello, Im in need of advice.
I created a ‘logo’ that incorporates PART of a T logo used by the Univ. of TN. My idea was to create something I could put on a tshirt and sell to the Football crazed UT fans around here. The way I used it is as a ‘pedastool’ that the design I created sits on, the bottom part of the T logo serving as said pedastool. Im very aware of tradmark/copyright laws and feel like I changed it enough or only used part of the logo to avoid copyright infringment. People very aware of the original T logo didnt realize that I had even incorporated part of the T in my design until I pointed it out to them to ask their thoughts.
Ive gotten very positive responses to my design as a whole and know it would sell if I made the shirts. But my question is, do you feel as if I’ve broken any laws from what Ive told you?
Would I be safe printing the Tshirts and selling them myself or would it be better if I went to the university to see if they would be intrested in buying the design? And if so, what would be a good starting point price for me to ask for my original design?
I really need some advice regarding this issue.
Please help.
I wanted to thank you for this great blog! I really enjoying every little bit of it and I have you bookmarked to check out new stuff you post.
Hello,
I have had a brand for 4 years now with a trademark in clothing, however my company has evolved into a handbag and accessories line and I have applied for a trademark in that category and now a large company with 3 letters different from mine has sent me a cease and desist letter. However, they do not sell handbags, they sell lingerie. I am concerned that this will be costly. Do they have a strong case to shut our business down? What are my options in order to not have to spend money. Can I add my personal name to the logo, designed by…? We are waiting to hear a response from a lawyer. Thank you