Lets say you have patent on your brand, trademark and copyright in the U.S. You sell clothing with your brand on it and your logo and so forth.
One day you go on eBay and you see counterfeit products being sold with your brand on them. What would my rights be as a the owner of the brand? Could I take legal action and sue them for money? Am I allowed to have all the money they've made from the product? Are they allowed to create spin off products with my brands on them?
I see lots of my merchandise being sold, thats evidently fake and not licensed by me either. Its everywhere on eBay and Amazon. I see products such as waterbottles with my brand on them, which is funny cause I only create shirts.
I am quite sure you don't have a patent, and since you seem totally unfamiliar with the terminology you have a problem. If you have a trademark, you have no problem. use the eBay VeRO program.
The trademark owner can sue for trademark infringement for the products the trademarks cover. It is the opposite of a do it yourself project.
Trademarks only cover the products listed in your registration, not other international classes.
The above is general legal and business analysis. It is not "legal advice" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.
Many of your rights will depend on what is in the license agreements that you have with your manufacturer, et al. Your agreements will need to be scrutinized. However, since the counterfeits include waterbottles it may be time to scrutinize what you own and what you don't own. If you do own the mark then the damages may be treble the amount of the merchandised sold by the counterfeiter. Best wishes.
The response above is general information related to law and not intended as legal advice since it’s impracticable to provide thorough, accurate advice based upon the query without additional details. It is highly recommended that one should seek advice from an attorney licensed in your jurisdiction by setting up a confidential meeting. Moreover, this response does not constitute the creation of an attorney-client relationship since this message is not a confidential communication because it was posted on a public website, thereby publicly disclosing the information, which is another reason to setup a confidential meeting with an attorney.
I agree this is not a "do it yourself" project.
You do need to protect your trademark and copyright.
Correctly presented the web sites will remove the offending product from where it can be located by you.
Getting at the advertiser is more of a problem.
Lawyer up....it is your business and reputation.
This is an IP question. You have a right to sue the persons selling counterfeit merchandise under trademark law.
If you suspect that someone is infringing on your trademark, I suggest that you consult with a lawyer in private and discuss your objectives and best course of action 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.
Getting a utility patent for an article of clothing would be quite difficult,and if successful, would likely have narrow claims. Unless the other products include each and every element of eat least one claim, they do not infringe.
If you have a design patent, then that design patent is infringed if the "copies" would be mistaken for the clothing depicted in the design patent by a consumer. The scope of protection is very similar to trade dress.
Trademark protects the name and/or logo used to identify your clothing as originating from you, not the clothing itself. Although you have common law rights to the trademark through use, registration of the trademark is advantageous for the presumption of the right to use the trademark throughout the entire US.
Copyright can protect the designs on the clothing to the extent that they are original creative expression, but not the clothing itself. The design elements protected must be separable and capable of existence apart from the clothing. Unless registration was applied for prior to the beginning of infringement by a given defendant, statutory damages and attorney fees are not available against that defendant for infringing that work, even after registration. You would still be aboe to obtain actual damages and possibly an injunction.
The vendors themselves would certainlhy be liable if - and only if - infringement of some protected right occurred. The third party websites could also be liable if they do not take reasonable steps to address the situation once they are notified of infringement.
The above provides general guidelines, but for actionable advice, I encourage a private consultation with an intellectual property attorney. You can then be provided with guidance about the proper steps to protect your designs, analysis of whether the copies truly infringe any rights, and a plan of action to deal with any infringement.
First, you need to identify the rights you have in your designs. There are, potentially, several types of protection available here.
Patents (of which there are various kinds) protects inventions. The three main categories of patents include Utility, Design and Business Method. A Utility Patent protects invention(s), or aspects thereof, which are: 1) useful, meaning they are not merely theoretical or abstract ideas, but have a practical application; 2) novel, meaning the invention is new and not done before, and 3) non-obvious, meaning there are meaningful differences between the invention and what has come before it. Although infrequent, a utility patent can cover aspects of clothing designs. But for such protection to be available, the feature needs to have a utility aspect. An example maybe a jacket with different size and shape pockets to fit various gadgets, or a protective type of clothing such as that in issued patent US 9003563, which the patent itself describes as “An article of protective clothing for use by a motorcyclist, or the like, including an abrasion resistant material.” A utility patent has a life of 20 years from the filing date of the initial regular patent application. If the initial application is a provisional patent application, then the patent has a 21 year life span.
Design patents covers ornamental, aesthetic aspects of items, which have utility. For e.g., the outward appearance of an automobile or a camera, or the icons on your smartphone, can potentially be protected by design patents. Re clothing, there are many aspects of clothing and related accessories, such as pocket shapes, bras, shoes, handbags, etc., which can be candidates for design patent protection. Unlike trademark and copyright protection, patent protection does not automatically attach to the invention and requires grant of a patent by the government. A design patent lasts for 14 year from the issue date.
Trademark acts as a source identifier and is any feature or characteristic, which 1) identifies a product or service to the consuming public, and 2) distinguishes the covered product or service from those offered by competitors. In the area of clothing, a trade mark would typically be the brand name or logo by which the clothing or accessory line or item is identified and promoted. Trade dress, a special type of trademark, can cover a product shape or its packaging. As an example, certain sports team uniforms, and Christian Louboutin’s shoe sole color have obtained trade dress protection. Trademark rights are acquired by usage of the mark in trade and commerce. Registration provides owner(s) of the trademark with additional rights, such as nationwide coverage and the right to seek statutory damages of up to $2M as well as attorney’s fees in the event of litigation. Trademark rights do not expire and last as long as they are used.
Copyright covers original works of authorship of the artistic or literary nature such as photos, paintings, songs, music, writings, sculpture, etc. In the areas of clothing, copyright can protect color arrangements, patterns, prints, and unique combinations of elements. Copyright protection is automatically attached to the work created. However, timely registration of copyright gives its owner(s) additional rights, such as the right to seek statutory damages of up to $150K as well as attorney’s fees, in the event of litigation. Copyright lasts for 70 years plus the life of the author, or, in the case of work for hire, 95 years from publication date or 120 years from creation date, whichever comes first.
Your best bet at this point would be to consult with an intellectual property attorney who can evaluate and analyze your case and advise you accordingly. Good Luck
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