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Use of Trademark -question

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C

ChimericalCat

Guest
Hi, I have a question about trademarks.

The thing is that I want to use a certain word for a system that I'm selling, but the problem is that this word is already a registred trademark. The real problem is also that the trademarked name is also the world-wide known and accepted name of the system itself, so I cant use another word to describe my "brach" of this system. It would be somewhat similar to come up with a new word for "bicycle", if this word would be a registred trademark.

Is there ANY way of using this word, without involving the organisation owning the trademark? (I do NOT want to relate to them). I've heard that it's sometimes alrigt to use someone elses work, as long as one refers to them (for example: a song in a movie, and when the subtitles are rolling, you'll find the name of the song, artist and record company in the end).

I am very, VERY, grateful for all replies and answers on this matter. Thanks!

/Marcus

PS: My product will be sold over the web. Server is located in the USA. I'm in Europe.
 


HomeGuru

Senior Member
ChimericalCat said:
Hi, I have a question about trademarks.

The thing is that I want to use a certain word for a system that I'm selling, but the problem is that this word is already a registred trademark. The real problem is also that the trademarked name is also the world-wide known and accepted name of the system itself, so I cant use another word to describe my "brach" of this system. It would be somewhat similar to come up with a new word for "bicycle", if this word would be a registred trademark.

Is there ANY way of using this word, without involving the organisation owning the trademark? (I do NOT want to relate to them). I've heard that it's sometimes alrigt to use someone elses work, as long as one refers to them (for example: a song in a movie, and when the subtitles are rolling, you'll find the name of the song, artist and record company in the end).

I am very, VERY, grateful for all replies and answers on this matter. Thanks!

/Marcus

PS: My product will be sold over the web. Server is located in the USA. I'm in Europe.
**A: then pick a different name.
 
C

ChimericalCat

Guest
HomeGuru said:
**A: then pick a different name.
I think you might want to read through the question again BEFORE posting non-relevant replies.

If someone would have trademarked the word "CAR", it doesn't really matter if it's a Ferrari, Ford or Toyota you are selling, because you cannot sell it as a "car" since this word is trademarked. And there is really no other description of the machine we call "car", because Ferrari, Ford and Toyota is just different models of the same kind of machine.

The question is if there's any way around this. For example: I'm selling Toyota "cars", whereas Ford is selling their "cars". However, Ford is the company trademarking the name "CAR". Would it be possible to sell my Toyotas by informing the public that my "car" is a)not related with Ford b)related with Ford c) Ford has the trademark right on the word "CAR", which I'm using.

The reason to why it's impossible to pick another name should be pretty obvious (should have been already at the first post). You cannot describe a well-known thing with other words than the one that is already in use.

Try to sell a car without calling it a car? Doesn't work, does it. Alright, so I'm giving it a go and calling my new car an "wag" (from Car-Carriage, Wag-Wagon). Does ANYONE understand what a wag is? No, because the word you will find in a dictionary is CAR, which also happen to be trademarked by another company!

See the problem now?

Thanks for (serious) replies
 

BelizeBreeze

Senior Member
ChimericalCat said:
I think you might want to read through the question again BEFORE posting non-relevant replies.

If someone would have trademarked the word "CAR", it doesn't really matter if it's a Ferrari, Ford or Toyota you are selling, because you cannot sell it as a "car" since this word is trademarked. And there is really no other description of the machine we call "car", because Ferrari, Ford and Toyota is just different models of the same kind of machine.

The question is if there's any way around this. For example: I'm selling Toyota "cars", whereas Ford is selling their "cars". However, Ford is the company trademarking the name "CAR". Would it be possible to sell my Toyotas by informing the public that my "car" is a)not related with Ford b)related with Ford c) Ford has the trademark right on the word "CAR", which I'm using.

The reason to why it's impossible to pick another name should be pretty obvious (should have been already at the first post). You cannot describe a well-known thing with other words than the one that is already in use.

Try to sell a car without calling it a car? Doesn't work, does it. Alright, so I'm giving it a go and calling my new car an "wag" (from Car-Carriage, Wag-Wagon). Does ANYONE understand what a wag is? No, because the word you will find in a dictionary is CAR, which also happen to be trademarked by another company!

See the problem now?

Thanks for (serious) replies
All this drivel for nothing. You were given the correct answer to begin with. If the name you want to use is trademarked you cannot use it except in news accounts or fair-use such as referring to it in publication under certain circumstances. Fair-use does NOT mean you can use it to differentiate your product.

Either find another name or get sued. Simple enough.
 
J

J. Michael

Guest
All this drivel for nothing. You were given the correct answer to begin with. If the name you want to use is trademarked you cannot use it except in news accounts or fair-use such as referring to it in publication under certain circumstances. Fair-use does NOT mean you can use it to differentiate your product.
Do a little research.

The 'fair- use' defense, in essence, forbids a trademark registrant to appropriate a descriptive term for his exclusive use and so prevent others from accurately describing a characteristic of their goods." Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1185 (5th Cir.1980). Once again, the courts will hold as a matter of law that the original producer does not sponsor or endorse another product that uses his mark in a descriptive manner. See, e.g., Schmid Laboratories v. Youngs Drug Products Corp., 482 F.Supp. 14 (D.N.J.1979)

Similarly, competitors may use a rival's trademark in advertising and other channels of communication if the use is not false or misleading. See, e.g., Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir.1968) (maker of imitation perfume may use original's trademark in promoting product). [5]


http://www.tabberone.com/Trademarks/trademarks.html
http://www.tabberone.com/Trademarks/folder/NewKids.html

* I am not affiliated with the links in any way and this posting is simply a courtesy.
 
C

ChimericalCat

Guest
Thanks for the replies and for the interesting link about the New Kids on the Block-situation.

If I have understood this right, I can use the copyrighted word when I'm describing my product, as long as I make it clear that I'm not affiliated or related to the originator or the original product.
This is the "fair-use" -thing, since I'm using the word to make examples and descriptions of my own product with a word that is widely accepted, and since I'm clearly stating that I'm not related in businees or organisation to the originator.

I'm not sure if I got it right, especially since I did only read the article (and some other unrelated stuff), and since I really dont know much about laws and related stuff (hence this question in the forum).

I'm very happy to see the respond though, and it gave me a lot of information and thoughts :)
 
J

J. Michael

Guest
"If I have understood this right, I can use the copyrighted word..."

I assume you meant trademarked, not copyrighted.

"I'm not sure if I got it right, ..."

Even though their legal staffs often overstate the scope of trademark protection, these companies mean business and unless you understand the issues well enough to defend yourself, or can hire a local lawyer who knows trademark law very well, don't mess with it. Forums like this are for general help and not for giving advice.
 

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