If I was issued a letter for trademark infringement, am I allowed to donate the clothing (no profit) without getting sued?
However, instead of just throwing the clothes into the garbage, with the recent Hurricane Ida displacing families and destroying all their possessions, I wanted to donate the clothing to charities that would provide clothing for these families.
Having already received a letter from Reebok, would they be able to sue for this action?
3 attorney answers
Depending on what the letter says, maybe you should get Reebok to agree. What you suggest has been done in the past as one component in resolving a cease and desist demand, and the fact that at least your mark was published indicates the situation might justify it. But it's hard to say without reading the letter and evaluating all the facts.
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This is going to depend on exactly what happened and what was written.
If Reebok filed an opposition, which you let go unanswered, then you are possibly free to do what you want with the items, just not to get your trademark.
If Reebok sent you a letter accusing you of infringement, then it depends on what they wrote and how strong a case that they have. Do they have a case (you will most likely want an attorney to give an opinion on that)? Did they demand that the items be disposed of in some way?
From what you wrote, you didn't mention actually selling any items, just making them.
So, as for infringement, there may be some damages they could go after based on whatever advertising that you did, but otherwise it usually comes down to your profits or their losses, which don't seem to be mentioned.
As for how to discard items, if that is what you choose to do, it again depends on the details of the letter. I have sent cease & desist letters where we demanded infringing products be destroyed (this is pretty common), but some ones for clothing where we demanded that they be donated (downside is that infringing products still out there in circulation, but upside is my client knew that someone would still benefit from them).
Safest bet is to destroy them, but it does sound like you should talk to an attorney confidentially and see exactly what is going on here and what your options are.
Making donations of the "accused" and allegedly infringing products won't prevent you from being sued for infringement, and I'm guessing the letter you got demanded that you turn over your remaining inventory to them.
Typically those who allege infringement don't want any alleged infringers to do anything other than turn any remaining inventory over to them. They want allegedly infringing goods off the market, and they absolutely don't want discarded items ending up in the trash where they can still end up in commerce by e.g., "dumpster divers."
In my experience, THEY want to decide how and where and when to destroy "accused" merchandise, and for that reason, I don't think they'd agree to a donation of any kind. Their bottom line is protecting their valuable IP. I don't think they care enough about the unclothed to approve of donations, no matter how well intentioned.
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