Can I be sued for trademark infringement for creating a uniform using logos provided to us by our customer.

Our company makes uniforms for many sports teams whom provide us with a general design and logo, we then create a sketch of the uniforms and after approval by the client create the uniforms based on the approved design. We have a client whom has ordered three times with one style. This company has since let go a member of their team whom is threatening to sue us for trademark infringement, claiming that he alone had the rights to use the logos and not our client. My basic question is if we make uniforms in this fashion using client provided logos and designs, which we put together and have approved by the client, can we be held liable if the logos are indeed trademarked, or is the client whom requested the uniforms and provided the design liable? - Is this your question? Add additional information
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Answers (2)

Laura Mcfarland-Taylor

Laura Mcfarland-Taylor

Contributor Level 8
I certainly hope that you have a written agreement with all of your clients that would indemnify you in these types of situations and that you require approval of the uniforms in writing.

That said — I think that your question really is: does this guy have a leg to stand on should he sue you (because, frankly, anyone can sue you for anything) and my answer is, probably not. If you received the logos, etc from the client and then received approval to make the uniforms I think that you could then counter-claim against the other members of the team and get yourself out of the suit.

However, if he does sue you please do not try to handle it on your own — you really need to speak with an attorney who is knowledgeable about intellectual property matters. You should be proactive and get an attorney now and then when the former team member threatens you, you can tell him that he needs to speak with your attorney. This may help take you out of the picture because I am sure that some of his talk is an attempt to intimidate you.

Good luck.
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Clark AD Wilson

Clark AD Wilson Avvo Pro

Contributor Level 5
A few quick thoughts:

1. When this disgruntled former employee worked for the client, did he have an employment agreement that required his creations to be assigned to the employer? If yes, then the disgruntled former employee may not have a good case against anyone because he does not own anything.
2. The design created likely addresses some copyright issues and if the company hired him to create a logo, it may be considered a "work for hire", in which case the company owns the rights to the creation.
3. Ms. McFarland makes a good point in that your only involvement is to manufacture uniforms from direction by the client using their logos. You then return the uniforms to the client for their use. So, in essence, you are not actually using the logos in a way that could be labeled "trademark infringement" or "dilution". You should however, get an indemnification in writing and signed by the client.
4. If these threats escalate to something more serious, seek counsel.
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