Intellectual Property Law
Intellectual Property Law Questions? Ask a Lawyer
Hello, I will be assisting you
question: you noted that there is a trademark registered but you also mentioned that the status of the mark is "dead". Can you clarify please?
Also do you know if the LLC with the shortened name is XXXXX XXXXX the original trademark?
when I searched the original business name at http://www.uspto.gov/trademarks/index.jsp I showed the name listed as "dead"
Yes the shortened name is XXXXX XXXXX the original name
trademark I meant
If the mark is dead then the mark is no longer protected by federal trademark, however the mark may still be protected by what is known as common law trademark intrastate
are you interested in releasing a similar product/service to the one originally protected by the trademark?
I want to create tshirt designs that are based on the former business that is no longer in operation but the LLC with the new shortened name still owns the property
Essentially they dropped "resort" from the name
I see. so the design is a design of a building.
yes a distinctive feature of whats left of the building. It is more than likely to be torn down
Got it. So you have a couple of legal issues here. Let me explain:
the LLC looks like they will be losing the permits to the land soon as well
the first question is whether you can use a building in commercial work. The answer is generally yes so long as the building is in public view.
the second question is whether using a distinctive feature of the building will dilute certain publicity rights that the property owner may have
this is a tough one and I don't think there is a bright line answer but a couple of things would work in your benefit:
it is definitely in public view, but not sure if I would be diluting publicity rights
1) if the distinctive feature you mentioned is not currently associated with the LLC they that helps your case 2) if the number of t-shirts you are printing is fairly llimited then that will help your case as well 3) finally if the LLC is going to go out of business then that will help your case
what about use of the old business name?
Also not sure if the LLC is going out of business. They may be just losing the permits to the property
kind of a can of worms
you can use it in interstate commerce but intra state the LLC with the shortened name may still be associated (in consumers' minds) with the old name
the question is whether a reasonable person would believe that the t-shirts were crated by that LLC?
if the answer is yes then either you will not be able to sell it intra-state or you need to find some other angel. For example, make the t shirt design to be satirical so that way your first amendment right would come into play to mitigate the confusing commercial use
well the marketing appeal would be that they referred back to the resort when it was still open
make it a paradoy/satire and your case for use would be a lot stronger
I think I understand. If I use the name and put the building on it people may think the LLC had created them, but if I use the building and change the name or something I have a better chance of not getting into trouble
you got it!
would it make any difference if I got the trademark to the old name or is that even possible if I am not a "resort?"
One last thing, is there anything else you can recommend to keep out of legal hassles?
to register a trademark you need to have a product in interstate commerce. Your shirts will qualify and you would be in the clothing category. You could do that but the botXXXXX XXXXXne is that you are not trying to register your own brand necessarily rather you are using someone else brand on your tshirt
Ok that made total sense!
comedy is the great savior of trademark/copyright infringement. So if you can make the shirts funny 1st amendment rights have a good chance to overcome trademark infringement
Thank you for allowing me to assist you
cool man you were totally helpful!
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Thanks and aloha!
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