A particular liquor company has sent a very nasty letter to a friend of mine who has created beautiful lamps out of many types of liquor or wine bottles. She adds flowers, ornaments or feathers or beads and lights inside the bottles to create very attractive lamps and home decor sculptures. She uses only the real bottles, most or which are not recyclable. They are insisting that she not sell anymore, do several other things including just outright pay them $4,750 because of her "trademark infringment." But she is using THEIR empty bottles. Aside from the fact that she does not sell that much and her profits go towards her cancer treatment or cancer research, is this truly a TM infringment--using the actual empty bottles for a new artistic creation?
Intellectual Property Law Attorney
Yes this is in all likelihood trademark infringement. The problem is that by using well-known bottles (even empty), your friend is suggesting an official association between her lamps and the liquor companies. It is almost always improper to profit by associating your products with those of a famous company, celebrity, artist or design without obtaining a license to do so. Your friend needs to educate herself about intellectual property law before she gets herself into further hot water. Meanwhile, she better retain a good IP defense lawyer to negotiate a settlement with this liquor company. Perhaps she can negotiate a license so she can stay in business. Without a license, she should stop selling these lamps---if she continues to do so without a license it will be financially disastrous for her. Yes--she should get a license from the owner of the trademark and trade dress rights in every bottle she uses.
1 lawyer agrees
Intellectual Property Law Attorney
Another horror story about what happens when you don't use an attorney.
NO, that is trademark infringement under 15 USC 1114 and can get your "friend" in real trouble. If that friend is you get to a lawyer right away, if not show her this. Trademarks are indicators of source and the source of the other parts are not the particular liquor company. The liquor company has the right and duty to control the quality of goods bearing their trademark and your friend is violating that right and making and selling goods of uncontrolled quality [Who is making the flowers, beads, feathers, beads, lights and other stuff and who install them and in what manner and how does the liquor company control their quality? Answer: by stopping this infringement, as they are doing] under their name. Stop doing it NOW and now you will have the opportunity to pay a lawyer (theirs, yours or both) much more than you would have had you used one to begin with. Think you might use a lawyer next time?
PS The liquor company likely has licensee for lamps and perhaps even an exclusive licensee and must legally protect that licensee and the revenue stream of royalties.
I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.
Patent Application Attorney
I usually agree with Bruce, but I do not think it is as cut and dried. The test is whether the average consumer is likely to be confused into believing that the liquor company is the source of the goods. Sometimes you see the products of others used in such a way that you are pretty sure that the original maker of the product is not making the recycled product.
Get to a a good trademark attorney and have them look at the facts more carefully. At a minimum you can probably get them to come off the $4750.
This is not legal advice and fee legal advice is worth what you pay for it. The facts of every case are different and should be addressed by a competent attorney who has all of the facts.