I have a widget that is being manufactured in China by generic manufacturers. These manufacturers are encouraging me to repackage this use their help in Trademark services , art work etc etc. My question is can I trademark a generic manufactured widget? What am I trademarking, my artwork( logo etc) or the actual widget( I don't know if that makes sense).
Assuming that the "widget" is a reference to your product, you do not trademark the widget, you trademark a word, logo or phrase used in conjunction with that product that is intended to be an identifier of its source. In addition, you would be well served to NOT listen to the recommendations of your Chinese manufacturers. You should speak with a seasoned trademark attorney with experience dealing with Chinese manufacturers to discuss how best to protect you. Otherwise, you may find that they own all the meaningful rights in your widget. Act quickly!
This information is intended to be general and educational in nature. It is not intended to be specific legal advice or establish an attorney-client relationship. I require a signed retainer agreement from a potential client to establish an attorney-client relationship and before I will provide specific legal representation.
The trademark speaks to the word(s), symbol, etc. that identifies your goods or services in commerce. For example, McDonald's the word is a standard character text trademark, the golden arches is a logo but is also called an image mark or stylized mark, McNuggets is a product name and text trademark, Big Mac is a product name and text trademark, "I'm Lovin It" is a tagline or slogan and a text trademark, etc.
It sounds like what they are saying is that your purchase of their goods is automatically a white-label agreement where you are free to brand those products as your own and sell under your own mark. I don't what it is you are selling, but I would of course make sure that it is not violating any patent rights which gives the inventor the right to make and sell a protected invention.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox Business News on the importance of the due diligence process and our overview guide.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
A trademark typically protects brand names and logos used on goods and services (word, phrase, symbol, or design, or a combination thereof). A patent is the grant of a property right to the inventor (the sole right to exclude others from making, using, or selling an invention.) Therefore, you can trademark a name and logo (graphic design), but you must patent an invention to exclude others from making, using, or selling an invention. You should consult an intellectual property attorney to help you protect your rights.
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Be very wary of anything your Chinese manufacturer is encouraging you to do relative to US laws.
Get your own US attorney to discuss your details, your liability, and your options.
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Unfortunately it is not uncommon for Chinese manufacturers to sell proprietary products that they manufacture for the holder of the intellectual property rights and then sell them to others, representing that there is no barriers to selling the products. Such protection could include utility patent, design patent, trade dress, and/or copyright. I would make sure they are willing to provide a warranty that their products do not infringe anyone else's intellectual property and indemnification if it does (although it would be difficult to enforce such an agreement in China, their willingness or lack thereof to provide the warranty could provide an indication of whether their claims are legitimate). You should also have a freedom to operate search performed by your attorney, regardless of whether such a warranty is obtainable.
As others indicated, a trademark protects the name and/or logo identifying the source of the goods, and does not protect the products themselves (although trade dress is a form of trademark protection). Before adopting any trademark, you should have a clearance search performed in order to make sure that there is no likelihood of confusion with anyone else's trademark. Trademark rights come from use of the trademark, not from registration, so both registered and common law trademarks need to be considered. if the search results are positive, then an application for federal registration should be filed. This can be done based on a bona fide intention to use the trademark, but the registration will not be issued unless/until the trademark is actually used.
As long as your product does not infringe the Patent or Trademark rights of others, you may repackage and sell it under your own mark (name and/or Logo). You should retain an experienced Intellectual Property attorney to make sure that your product does not infringe on the IP rights of others. Your attorney should also clear your proposed trademark/logo for use and if applicable, federal registration in the USPTO.
Mr. Sack's postings on Avvo are of a general nature, based on the facts provided and are not intended to be taken as legal advice or to establish an attorney-client relationship.
You have raised anexcellent and often asked questiion and the answers above do a fine job of explaining the technical elements of trademark protection. You're question has a deeper level on dealing with Chinese manufacturers. A widget is also often used in the corporate world in reference to a generic product for hypothetical purpose so you may want to consider a more fanciful term and design for your brand quality if the product is common or a commodity.. Having dealt with international trademark matters for more than 30 years and often with Chinese manufacturers, I would suggest that their approach to brand and IP protection in general varies greatly depending on the industry and the contacts of the manufacturer within the industry. You need to consult experienced counsel that has negotiated in these areas to clarify the extent of your rights and their rights as to registration, licensing, enforcement, notice, etc. to ensure both your source identifier and the "widget" it identifies are not abused. Expect to engage in vigilant enforcement.
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