Letter to advise use

[gamaleo]

We were previously involved in an infringement lawsuit when we unknowingly used red end on the product we are selling. We did not know that somebody registered the color for a similar product.

If we just write a letter to the owner of the trademark (red on the product is protected by a trademark) that we are selling a similar product with orange color (application for trademark still pending). Will we have anything to lose by doing this?

The material is a popular one in the industry and there is no likeliness of confusion with people in the industry/business. Will we be punished for trying to protect our product by using a different color than that used by a more established competitor?

[divgradcurl]

You should post to your original thred. It's confusing to have to read this in two different threads. However, the answer is the same -- nobody knows without ALL of the facts -- think about it, they've trademarked a "red" color, you want to use orange. How "red" is your "orange?" How "orange" is their "red?" How "red" must your "orange" be before you infringe? This is why you need to talk with an attorney who can review ALL of the relevant facts.

[gamaleo]

Thanks for the patience. I am new to this and am just learning.

[gamaleo]

Before going to a lawyer, I read about the factors/elements of infringement. I tried to answer this as best as I could. Can you advise me if based on my answers, there is an infringement?

PROOF OF ACTUAL CONFUSION
-both products belong to the same general class (i.e. steel tubes) are similar but they just have different colors at the end of the tube.
- no actual confusion because of difference in colors. Ours is orange, others use yellow or red.

STRENGTH OF ESTABLISHED MARK
- company using red registered their trademark in 1994. We are just planning to market our product out by 2005.

PROXIMITY OF GOODS
- US companies. We are in NY and another is in North Carolina.

SIMILARITY OF SOUND
- not applicable, since this is a design trademark only.

APPEARANCE AND MEANING
- same kind of product (tube) but different color to distinguish

HOW GOODS ARE MARKETED
- will be marketed through catalogs and flyers of the company

TYPE OF PRODUCT AND DISCERNMENT OF CUSTOMER
- steel tubes
- customers who normally buys this product are knowledgeable in the steel industry and would not likely confuse our product with that of another company.

INTENT BEHIND SELECTING THE MARK
- to distinguish our product from everybody else's product

LIKELIHOOD OF EXPANSION IN THE MARKET OF GOODS
- our customers are mostly from NY and NJ, and some from Florida. We might be planning to expand our market to other states.

Finally, will there be any adverse legal implication if we inform our competitor that we are using orange for our design trademark?

Thanks.

[divgradcurl]

That's all well and good -- those are the "Polaroid" factors for determining infringement (actually, "Polaroid" is one of the main cases, I think its a 6th or 7th circuit case, there are a couple of other cases in other circuits that describe the same test), but I go back to my original question:

"How "red" is your "orange?" How "orange" is their "red?" How "red" must your "orange" be before you infringe?"

Most of the factors you posted -- they've had a registered mark for a while, you are in the same line of business (same customers), the mark is pretty similar (color on the end of pipes), etc. -- work AGAINST you.

That doesn't mean that you can't trademark your color -- it just means that its not a slam-dunk.

However, why would you feel the need to inform your competitors of your new mark? If the mark is granted, and you begin using it, they'll learn about it that way. I don't understand what you would gain by "notifying" your competitors.

Wait until the mark issues, then being using it. If it doesn't issue, figure out why.

If your mark issues and you begin using in, and one of the other makers decides to sue you for infringement, they will have a more difficult time because a mark registered by the USPTO is presumed valid, and they'll have to overcome that presumption.