I wish to use a Hello Kitty image on a spare tire cover (not the Hello Kitty name) Is that considered Trademark Infringement?

Asked over 4 years ago - Baltimore, MD

If so, how would I go about getting a release for that image, for that one usage?

Attorney answers (5)

  1. Michael Dale Oliver

    Contributor Level 7

    Answered . It is not clear what you are doing - if you are going to apply the "Hello Kitty" image to any product and sell the product, as others point out, you would need a license from the trademark owner (trademarks apply to images as well as names, if the image is used as a trademark, and that one clearly is).

    If, however, you purchased something already with the Hello Kitty on it (like a shirt or towel or something) and you are just going to cut that out and attach it somehow to a tire cover for your own personal use . . . no that is not a trademark use nor an infringement.

    Please note, even if you bought those items in bulk and cut them out and sold them you still have a trademark problem - unlike copyrights and patents, where there is a first sale or exhaustion doctrine in most cases, that is inapplicable to trademarks.

    - mike

  2. Pamela Koslyn

    Contributor Level 20

    1

    Lawyer agrees

    1

    Answered . Yes, you can't appropriate that image to market your own product. You can look up for owner on the USPTO website, linked below, and ask the Japanese company, through its TM lawyer, for a license.

    Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.

  3. Daniel Nathan Ballard

    Contributor Level 20

    Answered . If there's a market for spare tire covers showing a silly cat face then ... well, it's just about time to give up.

    The direct answer to your question is as my colleagues have noted: you can't use the silly cat face w/o permission from the company who uses it as a trademark [note: the image is protected under copyright law as well]. To lawfully offer for sale spare tires showing the silly cat face [and please don't] you would need to buy a license from the trademark owner. Contact the attorney listed here http://tarr.uspto.gov/servlet/tarr?regser=seria... . Or not.

  4. Andrew Daniel Myers

    Contributor Level 20

    Answered . If someone has the image trademarked or copyrighted or otherwise protected, then you may not profit from your recopying of that image. You would need to discover who owns the mark and negotiate with them for a license to use it on your products.

    This answer is provided for informational purposes only. Actual legal advice can only be provided in an office consultation by an attorney licensed in your jurisdiction, with experience in the area of law in which your concern lies.

  5. Maurice N Ross

    Pro

    Contributor Level 20

    Answered . Trademark law is much more complex and nuanced than my esteemed colleagues may suggest. Not all trademarks, even if registered, are created equal. Some are famous and have acquired "secondary meaning" associated with a specific product, service or company. Others have been registered but are barely used, if at all, and are not known to members of the public. Each circumstance is different. Further, if you infringe a mark (intentionally or accidentally), it is not always the end of the world, nor is the trademark owner automatically entitled to stop you. The touchstone of trademark law is whether there is a likelihood of confusion between the trademark owner and its products and the infringer and its products. I never heard of "hello kitty" today so I do have enough information to begin to advise you. But there are many circumstances in which I have been able to advise clients that their use of a trademark--even if technically infringing--will not necessarily cause problems or result in litigation. Just because someone suceeds in getting the US Patent and Trademark Office to register its trademark does not mean that the trademark is valid and enforceable, nor does it mean that the trademark or something close to it can never be used by anyone else for any purpose. You need to consult with experienced intellectual property counsel before making any decisions about how to proceed on a matter such as this one.

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