trademarks.

There is a trademarked item I would like to change, in some way, to make it my own and sell. Would simply changing the colors be enough of a change? What about the font used for the lettering? What about changing the graphics used? In short, I like the message I would like to know just how different would it have to be to make it my own?
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Answers (4)

Pamela Koslyn

Pamela Koslyn

Contributor Level 10
Probably so different that no one could possibly see the similarity or become confused, so your purpose is using it would be lost. The point of a trademark is to indicate the source of the goods and services of the owner, and what the TM gatekeepers try not to allow is marks that look alike, sound alike, or have a similar meaning for similar or related goods or services - they don't have to be identical, just close enough. The USPTO wants to encourage unique and "fanciful" associations in people's minds -- think Apple for computers -- and once someone has that hard-won association, from ads and good branding, the USPTO protects it, and protects the consuming public from buying the wrong thing, by not allowing anyone else to get close to it. So you'd have no luck getting "Orange" trademarked for computers, because consumers would assume your computers were Apple products.

Don't start from the premise that someone else owns something good, and therefore worth using. That's theirs. Create your own value in your own mark. Once you've come up with some possible marks for your goods or services, hire an IP lawyer to help you make sure it's a good choice before ytou apply for registration, and also help you form a buiness entity and organize your business affairs.

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.
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Tammy L. Browning-Smith

Tammy L. Browning-Smith

Contributor Level 3
Based on what you just stated, it appears as if you want to change a message - changing fonts, colors, looks, etc. may not be enough. If the message is still the same, then it is still the trademark. The key, as mentioned before is whether or not is it "substantially similar" as to cause confusion

With all of this being said, there are exceptions for parody, political commentary, and perhaps a few others. Make sure you check this out with appropriate legal counsel so you can get as specific as possible.

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.
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Laura Mcfarland-Taylor

Laura Mcfarland-Taylor

Contributor Level 8
I agree with my colleagues. You really should consult with a trademark attorney before you go any further.
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Gerry J. Elman

Gerry J. Elman

Contributor Level 4
Generally I start an answer here on Avvo.com pointing out that a public forum such as this one isn't the place to obtain specific legal advice. But here I must add that your question isn't specific enough to allow for even a general answer. That's because a trademark is anything that might indicate to a prospective customer the source or sponsorship of the "item." A trademark could be a word (or words), with or without a graphic, or even some other aspect of a product such as a distinctive shape (e.g. the classic Coca-Cola bottle) or sound (e.g. the old NBC chimes). The legal test is whether your usage would create a "likelihood of confusion" with the source or sponsorship of the original item.

To answer your question, a lawyer in the relevant jurisdiction (which for now I'll assume is in the U.S.) with whom you form a confidential attorney-client relationship would need to determine whether the "trademark" in question is registered (either with the U.S. Patent and Trademark Office or one of the States), is protected under the (judge-made) common law, or is unprotected. If the original item includes a valid trademark, then the lawyer would seek to evaluate whether your proposed trademark is different enough to avoid having a court find that there is a likelihood of confusion, as mentioned previously, and hence, infringement of the trademark. In addition, the lawyer should consider whether the mark on the original item is famous enough to be protected by the doctrine of "trademark dilution" even if there isn't trademark infringement.

Are there circumstances where just changing the color would be enough to avoid infringement? Yes, where color is the dominant feature of the mark, such as the color pink for Owens-Corning Fiberglas insulation.

Are there circumstances where changing the font would be enough to avoid infringement? Yes, where the wording of the trademark are generic or merely descriptive of the product.

Are there circumstances where changing the graphic would be enough to avoid infringement? Yes, where the wording is generic or merely descriptive.

Your comment about "liking the message" implies that you aren't necessarily talking about a trademark but maybe about text or graphics that might alternatively or in addition be protected by copyright.

With those questions in mind, you should consult an attorney practicing in the field of intellectual property. Good luck.
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