Trademark Infringement

[tiabulat]

I sell digital designs on various websites. My designs are for personal and commercial use, for example I do a hand lettered phrase and sell it as a digital file and buyers can print it on a mug and sell it. Recently I did a common phrase design saying "Bump's First Christmas" and few days ago my design has been reported to the website I sell on, for a property infringement. So I did a little research and a brand TM the Phrase but in International Class 025 which covers clothing, meaning it is forbidden to print and sell a t-shirt whit that quote but you can sell a mug for instance. Since my designs often are printed on t-shirts, that brand has reported me. My question is do I have a legal right to sell my digital files ( which is not a copy of anyones work, but my original hand-lettered piece ) with a note to my buyers that this design can be printed ( and sold ) on anything except the clothing ( because of the class it is registered in ) and for personal use. Thank you in advance.

 

[PayrollHRGuy]

You can edit your original post to add your state and question.

 

[quincy]

I sell digital designs on various websites. My designs are for personal and commercial use, for example I do a hand lettered phrase and sell it as a digital file and buyers can print it on a mug and sell it. Recently I did a common phrase design saying "Bump's First Christmas" and few days ago my design has been reported to the website I sell on, for a property infringement. So I did a little research and a brand TM the Phrase but in International Class 025 which covers clothing, meaning it is forbidden to print and sell a t-shirt whit that quote but you can sell a mug for instance. Since my designs often are printed on t-shirts, that brand has reported me. My question is do I have a legal right to sell my digital files ( which is not a copy of anyones work, but my original hand-lettered piece ) with a note to my buyers that this design can be printed ( and sold ) on anything except the clothing ( because of the class it is registered in ) and for personal use. Thank you in advance.

What is the name of your state or, if not in the US, what is the name of your country?

If the holder of the registered trademark has already challenged your use of their trademark on your goods, you are best off financially finding a phrase that is not rights-protected.

A trademark holder is charged with policing the marketplace for infringing goods and enforcing their rights in their mark. They enforce these rights by having alledgedlly infringing material removed from places where it appears, by sending cease and desist letters, by sending demand-for-dollars letters, by filing infringement suits.

It is true that some trademark holders may see infringement where no infringement exists and the user of the same or similar mark could successfully challenge their use as a non infringing, legal use. But legal challenges can be costly.

You can have your current use of the trademark personally reviewed by an IP attorney in your area or find another phrase to use that is not a registered mark belonging to someone else. I think the latter choice is the wiser choice.

Good luck.

 

[tiabulat]

What is the name of your state or, if not in the US, what is the name of your country?

If the holder of the registered trademark has already challenged your use of their trademark on your goods, you are best off financially finding a phrase that is not rights-protected.

A trademark holder is charged with policing the marketplace for infringing goods and enforcing their rights in their mark. They enforce these rights by having alledgedlly infringing material removed from places where it appears, by sending cease and desist letters, by sending demand-for-dollars letters, by filing infringement suits.

It is true that some trademark holders may see infringement where no infringement exists and the user of the same or similar mark could successfully challenge their use as a non infringing, legal use. But legal challenges can be costly.

You can have your current use of the trademark personally reviewed by an IP attorney in your area or find another phrase to use that is not a registered mark belonging to someone else. I think the latter choice is the wiser choice.

Good luck.

Hi, I'm not from US, but From Serbia ( Europe ). I think you got me wrong, I don't sell goods, I sell digital files, designs. And they didn't registered that phrase, they only have rights to print it and sell it on clothing. That's it. Another good example is this, they have registered to use phrase "Ring Security" on hoodies and t-shirts, and only they have right to sell those with that particular quote. But on the under hand you can find on the market suite cases, mugs, children shirts etc, because it is not covered by class 25.

 

[quincy]

Hi, I'm not from US, but From Serbia ( Europe ). I think you got me wrong, I don't sell goods, I sell digital files, designs. And they didn't registered that phrase, they only have rights to print it and sell it on clothing. That's it. Another good example is this, they have registered to use phrase "Ring Security" on hoodies and t-shirts, and only they have right to sell those with that particular quote. But on the under hand you can find on the market suite cases, mugs, children shirts etc, because it is not covered by class 25.

You are still using their trademark and your use has attracted the attention of the trademark holder.

In the US, it is the first user of a trademark who is the presumed owner of the mark. This is a rebuttable presumption but registration of a mark is not a requirement in the US.

This differs from trademark laws in other countries, where registration confers ownership.

You can consult with an IP attorney in your area to discuss your use of their mark in your product.

We handle US laws and legal questions only on FreeAdvice. The laws in your country, as I noted, may differ.

 

[tiabulat]

Thank you. What do you advise if I want to register a trademark internationally, How do I do it?

 

[quincy]

Thank you. What do you advise if I want to register a trademark internationally, How do I do it?

You can visit the World Intellectual Property Organization (WIPO) for information on international registration. https://www.wipo.int/madrid/en/

Good luck, and thanks for the thanks.