I found out that a short phrase was trademarked. Example: Just do it (not the actual phrase)
If I change the word "do" to a backronym and use it like that would I be infringing in trademarked issues? Example: Just Don't Obsess it
I keep telling people here that they need a trademark screening search.
Once a real I.P. attorney does some research and a screening search, they can give you a real indication of what the answer is.
I will now be echoed by half a dozen of my colleagues whom will assure you that there are attorneys out there to help you. It is true.
This change would probably cause a likelihood of confusion as to source or sponsorship and you may be sued by Nike. There is no specific rule on likelihood of confusion, but there are judicially created tests to determine liability. I recommend that you retain an experienced Trademark Attorney to clear you proposed trademark or tagline, before your use and a potential suit.
For more detailed advice, I recommend that you contact an experienced Trademark /IP attorney to advise you in confidence about your options and potential costs. Many IP specialty firms, like ours, offer an initial free conference by telephone, video conference or in person if you are available locally and would be happy to speak with you. Call and speak with an experienced Trademark attorney who can assist you.
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.
If a short phrase is Federally registered as a trademark on the Principal Register it is presumed valid. The standard is whether there is a likelihood of consumer confusion between that mark, as affixed to the goods and your mark on your goods. I don't think your example is a "backronym" unless you are talking about JDOI which doesn't seem to be the case. If you have a complementary phrase, but you are not using the registered phrase, the likelihood of confusion standard would apply (as it always does) and you need to evaluate whether consumers are likely to be confused between the respective marks and goods. But the example you give is one for an extremely vigilant trademark proprietor. Such a company might be more likely to assert rights in a close case. There is not supposed to be copyright in short words or phrases, but how short is not an exact science. Consult with an experienced trademark and copyright lawyer.
You've received plenty of information already on the likelihood of confusion issue (re: whether or not you're about to infringe the mark of another). That being said, the answer is, "It depends", and depending on how litigious the mark owner is, there is a very real possibility that even if the answer is, "Yes", you may have to be told as much in a Federal court of law.
A lot of this will depend on how and where you're using the slogan. For example, is it going to be in the same industry that the slogan is being used right now? Or rather, would it be a likely, natural next "business" step for the mark owner to cross into that industry? These kinds of questions, among others, will get you closer to the answer you seek. For now, I'd recommend you reach out to your own IP attorney so that you can discuss the specifics of your matter in confidence. A lot of us offer free consultations, so it couldn't hurt.
Answers provided by Mr. Robinson are for informational and educational purposes only and by no means constitute legal advice or counseling of any kind.
You need to have the mark cleared by someone who knows how to distinguish between marks and who can determine likelihood of confusion. There are many issues that come into play such as chains of commerce, etc. See an attorney.
A "backronym" is a fanciful phrase created by expanding out an acronym. Examples are SOS = "Save Our Souls" and Wiki - "What I Know Is" and BING = "Because It's Not Google." None of the acronyms were created to actually expand out to those phrases -- people just did it because it seemed right, or funny. Your example is not a backronym.
What you apparently intend is to modify an existing trademark to mean the opposite of what the mark really means. Something like the case a few years back when a college student created a "South Butt" line of clothing as a parody on the already-existing and famous "North Face" brand of clothing. See http://goo.gl/ohNyhm [the college student agreed to stop].
Your intent is to capitalize on the consumer goodwill already created by the original mark owner.
Which could be lawful if the concurrent use of the two marks is not likely to create consumer confusion in the marketplace. A dog toy company, for example, prevailed when Louis Vuitton complained that the company's "Chewy Vuiton" dog toys infringed the "Louis Vuitton" mark used to brand handbags. The courts held that consumer confusion was unlikely and permitted the "Chewy Vuiton" dog toy sales.
ONLY your own Texas-license trademark attorney can advise you on you particular business plans. Good luck.
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.
To be clear, you really can't receive any trademark clearance advice here over a free and public Q&A platform and of course never in the hypothetical.
The issue is not really whether the two names or phrases are the same or similar but rather whether your use of it would cause market confusion as to the source of your good or service. For example, we are not confused as between Delta Airlines vs Delta faucets. Same exact name but in two very different industries. The more closely related the goods and services become, the more likely your name infringes. This also assume that your use of this phrase will also be a trademark use like "Just Do It" or "I'm Lovin It." Otherwise, merely placing a phrase on a shirt for example does not make that a trademark. It could just be ornamental use like is I use the phrase "peace, love & beer" on a shirt. Note too, that if it is clear that you are making a parody of a famous brand this might be legal use under fair use, but you need to make sure you get it right.
Before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the TX secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.
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 on all the text names 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 links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine 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 consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.
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.
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