Friday, December 3, 2010

First, I look at the purse; then the trademark

Dear Rich: I am assisting my cousin in launching a line of purses. We conducted research and found out that there is already a line of purses in the market being sold under the name that she would like to sell her purses. However, the name is not trademarked or copyrighted. Is she able to sell her purses under the name that she chooses even though someone else is already doing so, since there is not a trademark or copyright in place? Should she go ahead and trademark the name or get it copyrighted? The Dear Rich staff is -- like all well-bred blog staff -- interested in all fashion accessories. Did you know, for example, that purses can even be found in Egyptian hieroglyphics? Fascinating? Maybe not.
(1) Don't use the other company's name for purses or other fashion accessories. We assume when you say that the name is "not trademarked" (more on the improper use of trademark as a verb, later), that you mean it is not federally registered. A name can function as a trademark whether or not it is registered. In other words, if someone is using a name as a trademark, that person can stop later users even without a registration. (It's sometimes referred to as a common-law trademark.) You get additional rights and benefits by federal registration, but, as a general rule, you could not seek registration if you are aware that a competitor has been using the same name prior to your use. That's because the applicant must sign an oath indicating that the applicant has the right to claim the mark -- a right that you apparently don't have.
(2) Copyright has nothing to do with it. You can't copyright a name or short phrase. So neither you nor your competitor can protect the name mark under copyright law.
(3) What happens if you don't pay any attention to the Dear Rich blog? If you proceed with the use of the name while another company is using it, you have placed a serious limitation on your purse business. It's always possible that the other company may not find out about your use but if they do (which is more likely, the more popular you become), then you will probably have to stop your use and perhaps destroy any merchandise that contains the mark.
(4) Maybe we're wrong. We don't have all the facts, here, so it's possible we're wrong. For example, the namemay not be capable of functioning as a trademark for some reason in which case both companies can use it without much problem although neither company can stop others.