Use of an unregistered trademark from overseas on promotional items for sale in US?

[flopperbopper]

What is the name of your state (only U.S. law)? Iowa

I have a business idea that involves printing up merchandise (key chains, etc.) for recognizable brands from other countries that are not registered on the uspto.gov/trademark site. I think there's an overlooked market for merchandise bearing a beloved logo from overseas that is unavailable on merchandise either in the country in question or in the US. The plan would be to start small and make these items through a 3rd party promotional products vendor and sell them in the US and perhaps internationally.

My concern is that the companies may be doing business here on a small scale (exporting a few items that are sold in specialty ethnic stores). For example, "Krino's Bulgarian Feta Cheese" is imported all over the US but their trademark is either not registered or dead. Could they come after me were I to print and sell small plates with their logo and name since it's a common law thing?

I want to get the legal question partially ironed out before I turn to the ethics of this (I have to sleep at night and don't want to steal anyone's IP). I'll be working this issue through from both sides and this thread pertains only to the legal issue.

And, yes, I'd talk to a trademark lawyer before spending any funds on getting anything like this off the ground.

 

[Zigner]

(I have to sleep at night and don't want to steal anyone's IP).

Then abandon your plan. It's not your IP, even if it's not specifically registered here.

 

[quincy]

What is the name of your state (only U.S. law)? Iowa

I have a business idea that involves printing up merchandise (key chains, etc.) for recognizable brands from other countries that are not registered on the uspto.gov/trademark site. I think there's an overlooked market for merchandise bearing a beloved logo from overseas that is unavailable on merchandise either in the country in question or in the US. The plan would be to start small and make these items through a 3rd party promotional products vendor and sell them in the US and perhaps internationally.

My concern is that the companies may be doing business here on a small scale (exporting a few items that are sold in specialty ethnic stores). For example, "Krino's Bulgarian Feta Cheese" is imported all over the US but their trademark is either not registered or dead. Could they come after me were I to print and sell small plates with their logo and name since it's a common law thing?

I want to get the legal question partially ironed out before I turn to the ethics of this (I have to sleep at night and don't want to steal anyone's IP). I'll be working this issue through from both sides and this thread pertains only to the legal issue.

And, yes, I'd talk to a trademark lawyer before spending any funds on getting anything like this off the ground.

If the trademark or logo you want to use has a market in the U.S., you cannot use it on your own products without risk of an infringement suit. Registration of a mark in the U.S. is not necessary for the other country to have rights to their name/logo in this country. It is the use of the mark in commerce that provides the mark holder with rights in the U.S. with the first user of the mark generally presumed to be the owner of the mark. In other countries, registration of the mark is what will confer rights to the mark.

That said, you could potentially use the same mark as one used somewhere else in the world, if the mark is not registered in the U.S. or already in use in the U.S., just as someone in another country can use the same mark as one used here.

For example, if a company in Australia wanted to use "Faygo" as a mark for their soft drinks, and the U.S. Faygo does not market drinks in Australia under that name, it could be possible for the Australian company to register Faygo in Australia and use it to identify their soft drinks. They just could not market their Faygo here in the U.S., as Faygo is a protected mark in this country. Likewise, the U.S. Faygo would be unable to market their Faygo in Australia under the Faygo name if the Australian company has registered it (as a note, I have no idea if Faygo has registered their mark in other countries, so this is for illustrative purposes only).

Your instinct to talk to a trademark attorney in your area is a good one. This should be done prior to creating and marketing your products, so you are aware of all of the legal risks (and there is always a risk whenever you use another's mark, even if the mark identifies a business, product or service outside the U.S.).

 

[FlyingRon]

To synopsize Quincy:

Geographic diversity may mean you won't be infringing.
However, if the markets do cross you can be infringing.
Registration is NOT necessary for trademark rights.

Another point is that the USPTO database doesn't list marks registered internationally from other countries. International treaty however makes it possible for those marks to be enforced in the US as if they were registered here.

 

[quincy]

I am impressed by the succinctness of your post, FlyingRon.

In re-reading this thread, I realize that it is probably important to note that using another's trademarked name can be easier to do than using another's trademarked logo. Logos are often protected under both a country's trademark AND copyright laws, so the risk of infringement, and an infringement suit, becomes greater.