I make thread bears. Bears crocheted out of thread. A competitor bought/acquired the trademark "Thread Bears". They then applied for and received the trademark "Thread Teds by Thread Bears", but only after disclaiming thread bears and thread teds apart from the mark . they continue to police the term "thread bear" and state that their diclaimer only applies to other classes of goods. Is this accurate or not? May I or may I not describe my crocheted thread bears as such?
The federally registered trademark is "THREAD TEDS by THREAD BEARS." The THREAD TEDS portion of the registered mark is not registered by itself but only as part of the entire registered mark. Similarly, the THREAD BEARS portion of the registered mark is not registered by itself but only as part of the entire registered mark. But wait, there's more. It also appears that there is another registration as of March 24, 1998 (Reg. No. 2146208) for THREAD BEARS in Class 28 for "dolls and soft sculpture figures made of textiles." So, it does not appear that you can call your product by the mark THREAD BEARS if the product fits within the Class 28 description registered under Reg. No. 2146208. Sorry.
The foregoing answer represents general information only and does not constitute legal advice. Further, no attorney-client relationship exists as a result of reading or relying on the foregoing answer. You should seek sound legal advice from a competent IP lawyer.
The answer to your question depends on a number of factors.
If you are selling bears made of thread you can certainly refer to them as such. One can only enforce trademark rights over your use of a trademark they did not purchase words in the English language for themselves. If someone wishes to register a highly descriptive term then they shoulder the ridiculous policing involved. Now, if you are marketing yourself as "thread bears" this may cross the line over to infringement.
I think you should ask a lawyer to conduct a more formal analysis of the situation and advise you on how to proceed. I cannot really determine from the little info we have here whether they are over-reaching or not.
Most of us here, including myself, offer a free phone consult.
The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the areas of business law and intellectual property to entrepreneurs, small-to-medium size businesses, independent inventors and artists across the nation and abroad. 866-871-8655 [email protected] DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.
The disclaimer does NOT apply to other classes of goods. However, the records show that the owner of the mark "Thread Teds by Thread Bears" is the same as the owner of mark "Thread Bears". Accordingly, they have the right to police the term "thread bears". They disclaimed the standalone term "Thread Teds", which you are free to use... if you want to tick them off, use "Thread Teds by Gramma Joan" (or whatever). Variations on the theme may work too, like "Threaded Teddies" or such.
I am an Attorney-at-Law, licensed to practice law only in the state of California. Unless we have both signed a formal retainer agreement, you are not my client, and my discussion of issues does not constitute legal advice. Opinions expressed herein are those of the author, and do not necessarily represent the opinions of those who hold other opinions.
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