Hi there,
Repackaging and reselling question:
I want to start producing these deodorant dispensers that fit on keychains for travel. I want to purchase deodorant sticks (axe, old spice, dove, etc..), chop them up and repackage them into little refillable carterages to fit my device. As long as I clearly state that im selling "old spice and I simply repackaged it"... eg...is this legal?
Thank You,
Jon’s answer:
Somewhat, although you want to be real careful with how you use a third party's trademark. If your product uses Old Spice's deodorant, be very clear that there is no affiliation between Old Spice and your company, that Old Spice's trademark is registered in the name of another entity, and only use as much information as necessary to inform the public that you are providing refillable cartridges with Old Spice deodorant; there is no need to use any logos; this situation is similar to companies that sell parts for cars who indicate what cars their parts are for.
Even then, Old Spice can still claim that there would be a likelihood of confusion or dilution of its mark by you using it, even in an informative sense. If Old Spice doesn't want you to use its name, it likely will find a way to challenge that use.
The underlying lesson is to tread carefully when using another company's brand name, and make sure you make every effort to avoid confusion, or any believe that there is an affiliation or association between the companies.
Can I name my brand the same name as a retail store?: I have developed a line of skin care products with a certain brand name. In another state far away there is a retail store that calls itself by the same name. As far as I can tell, they do not sell any of their own products (under a store brand). Is this going to cause a problem for me?
Jon’s answer:
It depends on several factors, including whether the other company has a registration for the mark. If it does, it could have nationwide priority of use over you, although it depends on when it started using the brand name and when you did. If it has a registration, but you used the mark first, you could potentially cancel that registration, or you might be limited to using your brand name in your own geographic area.
If there are no registrations, then each party would have priority of use over the brand name in the geographic area in which it does business. Of course, given how easy it is to sell products nationwide over the Internet, it's hard to be limited to a small geographic area. With that in mind, assuming both products can coexist in their own region, at some point either party may look to expand its business outside of that region, and you may have some confusing overlap and the first one to use the mark in that region "wins."
I have a trademark but had to disclaim a word in my TM, then after yrs of branding, could I resubmit a TM without a disclaimer?: I have a 2 word Trademark that had to have one of the words disclaimed and 3 years later after branding the name in that industry I reapplied for the same TM but without disclaiming the word could I get this approved? Are their rules against that?
Jon’s answer:
There are no rules against it, but some words will always be disclaimed in connection with certain products. However, as you probably know already, sometimes trademark examiners require a disclaimer for certain words and sometimes they don't. However, it would be difficult to re-file an application where you had a disclaimer for a word in a prior application, because the previous disclaimer would be public record. Chances are if a disclaimer was required once, it would be required again.
Even without a disclaimer, that word could be descriptive or suggestive and only entitled to a narrow scope of protection anyhow.