Over the last two blog posts (see here and here) we have discussed various aspects of trademark law including the requirements for obtaining a trademark. If you recall, to obtain a trademark, the seeker must show that the graphics/artwork, word, slogan, or phrase meets the distinctiveness requirement which is similar to the originality requirement in copyright law. To satisfy the distinctiveness requirement, the graphics/artwork, word, slogan, or phrase must be more than a “generic” term or image. This is why the trademark of the term “travel care” was successfully challenged in the Remington Products, Inc. v. N. Am. Philips Corp case–the court found that the term “travel care” was so commonly used and widely known that it had fallen into the public domain. Furthermore, the court found that Philips Corp. had not established a secondary meaning for the term (which would have supported the finding of a trademark.)
Counselor, what if...
I have an original product that I designed on my own–a hat. I design each of my hats with own distinct logo–my trademark. But I feel like they needed a little something more, to add the finishing touch, and really make them stand out more. So I “borrow” a snippet of design pattern from my competitor’s hat and I incorporate it as part of my design logo as decoration to my logo. So when my competitor sees my glorious hat, which is very popular with the consumers, she flips. She says I’m using her mark to attract her business to me. She then threatens to sue me if I don’t stop making my hats with the new and improved logo. Counselor, they are my hats, with my design and logo, so she has no right to sue me, does she? Or is she just jealous because my hats are in steep competition with hers at this point?
Let’s Discuss Gucci America, Inc. v. Guess?
Your scenario is very similar to the Gucci America, Inc. v. Guess, 868 F. Supp. 2d 207, where Gucci sued Guess for trademark infringement and trying to “Gucci-fy” their products by incorporating four of Gucci’s marks: the GRG stripe, the repeating G pattern/the Diamond Motif trade dress, the stylized G, and the Script Gucci. The court examined in each of the scenarios whether Guess actually copied Gucci’s marks onto their merchandise, and found that Guess actually did copy the GRG stripe and the repeating G pattern. Before ruling for Gucci, the court examined numerous issues including whether Guess intended to deceive consumers by using the Script Guess (and found no intent to deceive by Guess) as well as the likelihood that the public would be confused by the similarities between the two competing products.
Based on the facts you present, the primary question is whether you intended to copy your competitor’s mark onto your merchandise. From what you have told me, it does not appear that you actually copied her mark, but incorporated her mark into your own mark. If this is the case, and consumers are not likely to mistake your products for hers, you have a strong case to continue to sell your hats. Of course, the Gucci case and trademark issue are much more complex than these two issues, but the fact that you appear to have satisfied them favorably definitely works in your favor.
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