I am making labels for bottles of ejuice (liquid for e-cigarettes). Some of the flavors my boss wants are from brands such as mountain dew, gatorade, maralboro, redbull, etc. I don't want any trademark problems so I changed the logos and names slightly so they're not the same but I think it will still be a problem because they can still be confused with the actual brand. Now I want to take off the logo and simply put something like "mountain dew flavor" or "red bull flavor" using the name but not the logo. Is that allowed or can I change the spelling to make it legal, for example changing mountain dew to Mount and Do.
If what you are using is "confusingly similar" to a protected mark then you may run into some issues. The idea with protecting your IP (your trademark) is to ensure that others cannot profit or trade off of your brand. It sounds as though you are trying to make the connection with the consumer to these protected brands so I'd certainly suggest that you consult with counsel before moving forward with this.
Legal disclaimer: I am licensed to practice law in the state of Washington and the answer provided above is for general information purposes only and should not be relied on as specific legal advice. This answer does not form an attorney-client relationship. You should consult with an attorney of your choice to fully advise you about your legal rights and obligations.
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Contracts / Agreements Lawyer
Best idea is always to get permission or a license from the trademark owner. Most of the trademarks that you mention belong to entities that protect their marks strongly, and they may not take kindly to being associated with the product you describe. Changing logos or words slightly is probably not going to help your defense when they come after you. The standard is likelihood of confusion and if consumers are likely to be confused by your slightly altered trademarks, the owner will prevail. You defense is weakened further, if not obliterated by the facts that you are selling a product that attempts to trade on the goodwill associated with someone else's trademark, and you've publicly acknowledged that this is what you are trying to do.
7 lawyers agree
I agree with Mr. Camm.
It sounds as if your boss (or the company you work for) is trying to profit from the brand names established by others, which is likely to trigger lawsuits from the owners of those brands. The owners of the brands you have mentioned make a lot of money with licensing and "co-branding" (promoting their product with another product or service), and there is no reason for them to allow your boss (or the company you work for) to sell e-juice using their valuable marks. Moreover, both of the brands that you've mentioned spend lots of time and money defending their valuable brands, so you shouldn't for a second think they won't find out.
You need to encourage your boss (or, if he is reluctant, his boss) to discuss this concept with a trademark attorney ASAP.
Any answer or other information posted above is general in nature and is not intended, nor should it be construed, as legal advice. This posting does not create an attorney-client relationship between you and the posting attorney, and you are urged to engage a qualified attorney who is licensed to practice in the relevant jurisdiction.
Intellectual Property Law Attorney
Your company cannot associate itself with these famous brands without putting itself at substantial risk of suit for trademark infringement and unfair competition. Your company cannot legally attempt to profit by associating itself with other famous brands. Anytime a company tries to profit commercially by associating itself with a famous brand, it is likely to violate various intellectual property laws---in this case, I can almost guaranty that the brand-owners will sue your company if you try to use their names. Eliminating the logo does not solve your problem if you still refer to the brand name. Indeed, I believe in many states this scheme might lead to criminal prosecution as a form of counterfeiting-----this is a very bad idea.
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You need to explore the issue over with your own IP lawyer to come to a best course of action. It is entirely possible that you can make reference such as "inspired by ..." very similar to the way fragrance makers do so legally, but it would not be prudent for anyone to conclude that here as there are too many variables and in some instances, although not likely here, a trademark can be achieved in a scent or flavor. Further, using a brand name as reference does not mean you can exploit it in your marketing, etc. So again, and as the others have aptly noted, you need some specific advice.
Most of us here, including myself, offer a free phone consult.
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For actionable legal advice, it's imperative that you engage an attorney with pertinent expertise and confidentially disclose all the facts.
While speaking with your attorney, ask whether the doctrine of "nominative use" of the trademarks you mention might be applicable to your situation.
Note that a trademark should generally be treated as a "proper adjective" starting with an initial capital letter, followed by a generic term for the product.
This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance. -Gerry J. Elman, J.D. Elman Technology Law, P.C. Swarthmore, PA www.elman.com
Intellectual Property Law Attorney
You need to get yourself to the nearest trademark lawyer and have this review. If you proceed with this plan you are likely to get sued by a number of companies. You are here asking because you do not know what you are doing. Take that as an indication that you should hire a trademark attorney who does know what he is doing. This will not cost you a fortune as most of us, myself included, offer free initial consultations. You would be well advised to hire a Texas licensed attorney if you are located in Texas, as your question indicates, so you get the benefit of any state law expertise. Good luck.
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.
Intellectual Property Law Attorney
I agree with Attorney Ross.
The trademarks you list are all "famous" marks. The primary issue is NOT, therefore, whether your use of those marks will likely cause consumers to falsely believe that those brands are the source of your products or sponsor or are somehow associated with your products. That would be a trademark "infringement" claim.
The primary issue is whether your use of those marks on your products will likely cause dilution of those famous marks "by blurring” [impairment of the distinctiveness of the mark] or "by tarnishment” [harming the reputation of the mark.]. That is a trademark "dilution" claim.
Your company obviously needs to consult with a trademark attorney -- but expect to be told that you may not use those famous marks -- in any way -- on or to advertise your products.
The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.
Trademark Application Attorney
I agree about the potential for consumer confusion. Another option might be to use generic terms to identify the flavors, e.g., lemon lime or cola. Take a look at how SodaStream branded its flavors, by way of example. An attorney can help you determine whether a term is generic.
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