Trademark infringement on words?

shinbet · Jun 20, 2012

Hi
I'm based in NY

A company alleges that that by using words to describe my business (in the most honest description possible) i'm infringing on their trademark.

To give an example (I feel by posting a real name, it will come back to haunt me potentially)
Business name: Joe's
Description: sell Potato Chips ,

Can a company named: Potato Chip Enterprises (who have a trademark on some logo, that says potato chip enterprises underneath) tell me i cannot use the Word Potato Chips to describe my business?

justalayman · Jun 20, 2012

difficult to say for sure without specific facts but based on what you did post, no, you would not be infringing on their TM. Potato chips is a generic description and as such, is not eligible for trademark on its own. Their TM would be Potato Chip Enterprises, not any individual part of their name.

Given your example, that would make it impossible for anybody to use the word cookies when describing what their company sells as cookies because Missy's Ugly Cookies has a TM on that name but realize that Zippy's Cookies also owns their name as a TM as well. I wonder what Keebler is going to call those little crunchy things they put in the bags if they cannot use the word: cookies.

shinbet · Jun 20, 2012

justalayman said:
difficult to say for sure without specific facts but based on what you did post, no, you would not be infringing on their TM. Potato chips is a generic description and as such, is not eligible for trademark on its own. Their TM would be Potato Chip Enterprises, not any individual part of their name.

Given your example, that would make it impossible for anybody to use the word cookies when describing what their company sells as cookies because Missy's Ugly Cookies has a TM on that name but realize that Zippy's Cookies also owns their name as a TM as well. I wonder what Keebler is going to call those little crunchy things they put in the bags if they cannot use the word: cookies.

Thank you
Problem is, when you're a small business with limited capital, and you're not trying to waste money or pick fights.. and then someone established comes after you, what are you supposed to do?

justalayman · Jun 20, 2012

shinbet said:
Thank you
Problem is, when you're a small business with limited capital, and you're not trying to waste money or pick fights.. and then someone established comes after you, what are you supposed to do?

You are in a position that many are placed. So often, it is might makes right. If the other party can afford to and is willing to throw money at this, it really doesn't matter if you are right or wrong if you cannot afford to defend yourself. Heck, them simply filing a suit can cost you thousands of dollars simply to just respond (which you really must do).

that's why us folk without the benefit of a huge bank account have to pick and choose our fights wisely.

shinbet · Jun 20, 2012

justalayman said:
You are in a position that many are placed. So often, it is might makes right. If the other party can afford to and is willing to throw money at this, it really doesn't matter if you are right or wrong if you cannot afford to defend yourself. Heck, them simply filing a suit can cost you thousands of dollars simply to just respond (which you really must do).

that's why us folk without the benefit of a huge bank account have to pick and choose our fights wisely.

Thank you for sharing your wisdom.. it is appreciated

Trademark infringement on words?

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shinbet

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shinbet

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justalayman

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shinbet

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