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how some one can tell me i can not use in my website (gourmet

 
Alex Reese's Avatar
  • Answered by:Alex Reese
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in Intellectual Property Law

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Customer Question

how some one can tell me i can not use in my website (gourmet healthy chocolate),
because the trade mark (healthy chocolate)?

 

Optional Information:
State/Country relating to question: North Carolina

Submitted: 325 days and 16 hours ago.
Category: Intellectual Property Law
Value: $38
Status: CLOSED

Accepted Answer

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Expert:  Alex Reese replied325 days and 16 hours ago.


Alex Reese :

hello

Customer :

we just received a letter from a lawyer that we cannot use these two words (healthy chocolate) they say that they trade mark these 3 months ago. the name of the company is xocai or mxi corp. we are in the chocolate business and some of our distributors use the phrase or tag line "gourmet healthy chocolate" in their websites so how can this be serious in this kind of context? should we take this seriously?

Customer :

for example this is one our distributors she has no logos about our business but she distributes our product. http://gourmethealthychocolates.com/

Alex Reese :

i see...

Alex Reese :

are you usihng "healthy chocolate" as a trademark / brand name? if so, for how long?

Alex Reese :

if you are just using the term in a descriptive way then there is nothing wrong with that

Customer :

we are just using the term to describe the quality of our product it is not a trademark or logo or brand name

Alex Reese :

has the other company used "healthy chocolate" as a TM for a long time? are they well-known?

Alex Reese :

most likely they have a weak/no case

Customer :

matter of fact we are using "ChocoNat the wellness chocolate" ChocoNat is trademarked

Customer :

the MXI corp has been in business for 9 years but they trademarked "Healthy Chocolate" 3 months ago.

Alex Reese :

the only issue would be if they have been using the "healthy chocolate" mark and you use the same mark in a manner that causes consumer confusion....but if you are using it descriptively then there is no TM issue

Alex Reese :

they could only prevent subsequent users (not pre-existing users) from using that mark, IN A TM CONTEXT

Alex Reese :

not for purposes of description

Alex Reese :

so I don't see you having a problemn here

Customer :

what do you mean by subsequent users ?

Alex Reese :

users of the mark

Alex Reese :

i.e. who started using the mark first...you generally cannot stop pre-existing users

Customer :

they are looking to intimidated us , because we are a threat to them?

Alex Reese :

perhaps

Customer :

so what is the answer to this lawyer letter

Customer :

?

Alex Reese :

well it would be best prepared by a TM attorney

Customer :

yes i am ready for that

Alex Reese :

but essentially you would say that you are not violating any rights they may have in the mark

Customer :

they have some of there distributor use wellness chocolate to ?

Alex Reese :

that your are not using the TM in a TM context, or in a manner that causes consumer confusion

Alex Reese :

??....not sure about your last question, but that's really not your concern

Alex Reese :

just focus on your own use

Customer :

ok

Customer :

can you write that letter for me?

Alex Reese :

for example, there could be 1000 infringers out there, and they could single you out if they wanted to

Alex Reese :

there is no "fairness" rule

Alex Reese :

no I cannot

Alex Reese :

neither can any other expert on this site

Customer :

why?

Alex Reese :

that requires an attorney-client relationship

Alex Reese :

that's not what the site is set up for

Customer :

from your last sentence: what do you mean by that:

Customer :

for example, there could be 1000 infringers out there, and they could single you out if they wanted to

Alex Reese :

im saying you shouldn't worry about what others are doing

Alex Reese :

because legally it doesn't matter

Customer :

so this letter is to do what?

Alex Reese :

your letter?

Customer :

the letter we receive?

Customer :

it ridiculous ?

Alex Reese :

well they are apparently accusing you of TM infringement in some manner

Customer :

but we have to answer or not?

Alex Reese :

you don't have to, but its in your best interest to respond

Customer :

ok

Customer :

who can help us to write that letter and what can be the cost?

Alex Reese :

you have to find a TM lawyer in your area

Alex Reese :

attorney rates vary, as do billing structures

Alex Reese :

it depends on whether some research is required or not

Alex Reese :

it may be a few hundred dollars

Alex Reese :

but could be more, they will let you know ahead of time, you can shop around a bit

Customer :

ok

Customer :

few hundred dollar and some research?

Alex Reese :

I really can't say...it depends on many things

Customer :

it not a lot to research

Alex Reese :

there is no way to give you a useful estimate

Customer :

it take you 10 minutes to find out it no case in this matter?

Customer :

ok thank you

Alex Reese :

from the limited info, but your attorney will have to dig deeper than I have here

Alex Reese :

but not much perhaps

Customer :

ok

Alex Reese :

best of luck!

Customer :

how i can get the transcript of our conversation?

Expert TypeLawyer
Category: Intellectual Property Law
Pos. Feedback: 98.9 %
Accepts: 2431
Answered: 6/25/2012

Experience: Experienced in intellectual property law

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Expert:  Alex Reese replied325 days and 15 hours ago.

you can just copy/paste it. but this Q&A is not something that you can present to someone as a legal opinion etc. this is just for your personal information.

 
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