Lees Summit, MO asked in Copyright and Intellectual Property for Kansas

Q: Am I violating any laws by selling items with my own graphic design/phrase tha has been newly TM'd by someone else?

Hello,

Thank you in advance for your time.

Three years ago I designed text and graphics that includes a particular phrase. I have been selling this graphic on textiles, apparel & enamel pins since 2016. It has come to my attention that another company has very recently trademarked the same phrase and is using it as their business name but with a different graphic. Serial #88221514. This other business does not market textiles, apparel or pins as we do, they are a services company

My question is; am I now violating any laws by selling items with my own graphic design but also happens to include this newly trademarked phrase?

3 Lawyer Answers

Peter D. Mlynek

Answered
  • Intellectual Property Lawyer
  • Moorestown, NJ

A: You are OK. The whole point of intellectual property law is to assure creators who make, invents or creates something, are protected from nefarious individuals who would steal or copy it. If you've been using a phrase in your business for several years, nobody can register it and prevent you from using it.

As a matter of fact, the opposite is true -- if you have been using that phrase before someone else did, you may be preventing them from registering that phrase. You are in a good position.

You've been using that phrase on textiles, apparel, and accessories, and you can continue doing so. What the other party has done is that they've used that phrase in a different business. Their trademark registration specifically limits their protection to use in their trademark class, in this case, international trademark class 044, namely, medical services, beauty care, agriculture, forestry, and like (IC 044 is kind of weird, other classes are not this broad).

So you can continue to use the phrase as you have previously. You can even use that phrase for different businesses, say, radio antennas, tobacco products, banking services, or pretty much anything else. But what you cannot do is to use that phrase on medical services, such as on a cardiology clinic, or a farm business, or other services that fall within trademark class 044.

Marcos Garciaacosta agrees with this answer

1 user found this answer helpful

Griffin Klema

Answered
  • Intellectual Property Lawyer
  • Tampa, FL

A: I agree with Mr. Mlynek's answer. Based on your question, you appear to be the "junior user" compared to the applicant, Brooke Rosenblum (serial no. 88221514), who claims a date of first use starting in 2013. In any event, there doesn't sound like there would be any consumer confusion between your products and Ms. Rosenblum's because they're different. If you really wanted to know if you have trademark infringement liability, you would need to evaluate whether there is actual or likely consumer confusion between your product and the registrant's products. For you in Kansas, the factors that are analyzed to determine trademark infringement are found in the case of Sally Beauty Co. v. Beautyco., Inc. 304 F.3d 964 (10th Cir. 2002). It doesn't sound like your goods are the same as the services identified in the application ("Holistic health services featuring herbal medicine and in-person health care services; providing a holistic health website featuring health information in the field of holistic medicine, herbal remedies and aromatherapy"), so the likelihood of confusion sounds very low to non-existent.

1 user found this answer helpful

Marcos Garciaacosta

Answered
  • Intellectual Property Lawyer
  • Mesa, AZ

A: Agree with the colleagues.

Think Delta, delta, Delta. Faucets, airlines, power supplies. All co-exist in the market and nobody would get confused.

YOU SHOULD consider registering your brand before somebody else uses it for your same market and registers it before you.

YOU DO HAVE SOME rights, but you can dilute them if you do not act.

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