Labels and Trademark Infringement
Author of this post: Jean Perwin | About Blog Authors »
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
April 18th, 2008 at 9:55 am
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
December 1st, 2008 at 4:26 pm
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?
December 2nd, 2008 at 5:49 pm
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.
June 28th, 2009 at 9:51 pm
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
June 29th, 2009 at 2:40 pm
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.