Derivative / Similar Phrases to Word Marks

[Jazzman05]

What is the name of your state? Pennsylvania

I'm a documentary film producer, and I completed a film in early 2004. The title of the film uses a phrase that includes words/phrases commonly used in the real world to describe the subject matter of the film. Unbeknownst to me, a periodical that deals with similar subject matter has a trademark on a group of similar words/phrases.

The film title does not use the entire trademarked phrase, and includes other words that do not appear in the trademarked phrase. Also, the trademarked phrase, although apparently in use prior to the film's production according to USPTO, was not formally registered until after the film was completed. We did have a title report prepared by an attorney, which indicated that the film's title did not include the full use of any trademarked word mark.

Can one infringe on a trademarked phrase if one doesn't use the complete trademarked phrase? Is this even an issue since the film's title was developed prior to and independently of the periodical's trademarked phrase?

Thanks!

 

[divgradcurl]

Can one infringe on a trademarked phrase if one doesn't use the complete trademarked phrase?

Potentially. This will depend on many factors, some of which will include what the phrase is, how much of the phrase is used, how the "other words" impact the phrase, how the phrase is use, etc. This is very fact specific.

Is this even an issue since the film's title was developed prior to and independently of the periodical's trademarked phrase?

Timing in these cases can be tricky. The fact that you had a search done is good, but not dispositive. If you had a search done, found nothing, went out and filmed your movie, and found out that sometime in that intervening period someone filed for a registration of the mark, well, then that original search isn't really going to help you. But whether or not the timing is a factor here will depend on all of the facts of the case at hand.

Have you been threatened or sued yet? If you have, see a lawyer immediately. If you haven't, you still might want to consider talking to a lawyer with experience in trademarks, who can review all of the relevant facts in your case and opine accordingly.