Intellectual Property Law
Intellectual Property Law Questions? Ask a Lawyer
PLEASE DO NOT use the rating system until satisfied. Instead, please click REPLY TO EXPERT to continue our conversation. Hi. Thanks for contacting us. Well, yes...but its hard to know if the particular fine point is within one's ken, without posting the question. But if for some reason, I get stumped, there is no charge -- and we'll open to other experts, among whom there may well be one who knows the answer to the most esoteric point (if I don't!). Thanks for posting the question so we can see about getting you useful information!!!
Do you mean the Boston Bruins?
I must warn you that a solid yes or no answer in a legal information website is impossible due to the complexity of trademark law. But I can explain the factors that would go into infringement, how they are measured in different situations, and you can draw your own conclusion. If that's ok, then I can answer. If all you want is a yes or no, then I can't -- and I suspect no one on the site could, because that's the kind of analysis that one's own lawyer does confidentially, protected by attorney-client privilege -- which is, obviously, unavailable on legal information website. Let me know how to proceed, or if you wish to request refund. Thanks.
Sorry, for any delay. We have multiple questions out -- as people respond back and forth.
What I can tell you is:
The analysis must be broken down into lawyer's harrasing vendors as one issue and actual trademark law as another.
The reason they are separate is that only the most outrageous legal assertions will bring sanctions against lawyers or clients when what they are doing is frivolous. If there is even a long-shot argument to support the case, they won't get in trouble for seemingly bogus cases. Thus, its not the actual law that one needs to worry about in a situation as described, but the expense, and hassle factor. Its a cost-benefit analysis for any business to make, since those with the deepest pockets have the greatest ability to use lawyers as battering rams, even if the cause is questionable.
That said, the law of trademark is not a yes-no proposition. The reason is that trademarks are actually supposed to a consumer protection measure. While businesses can use them to protect their own turf, the policy underlying trademark is to prevent consumer confusion -- that is stop consumer from being duped into buying one thing, thinking it originate from a particular source, when it actually comes from another source.
Trademarks can take many forms. Even colors can become a trademark over time -- if consumers associate a certain color scheme strongly with a certain business. That's why in one famous case, a maker of pressing pads gained a trademark in that industry for the color green -- as its high quality pads were always colored green. It took years, but eventually, it was able to get a court order to stop others from selling green pressing pads.
I think you can see how this should figure into any choices made as to the gear sold. Even if a business has never pursued a color-scheme case before, there is always a risk, if the colors are so deeply entrenched in the market, that the company may do so later.
But generally, the more similar something is, the more likely it is to violate a trademark. Golden Arches on a competing hamburger restaurant would almost certainly be trademark infringement that MacDonald's could win. Double arches in another color are not as clearly violative, but probably are. A single arch in a different shape may not violate a trademark -- but its not a sure thing. There'd be court evidence -- often polling data from consumers.
The other thing that can protect is if something is "generic." Thus, there's a court-supported trademark for a product called Chik-Fry, not for one Called Fish-Fry. Why? Because Fish Fry is a generic name for a fried fish dinner.
What some merchants might do is actually contact the licensing office of the sports league or team. Ask if they have any guidelines for avoiding trademark infringement. In some cases, they may be willing to either review a product (as a matter of good will), or accept a small licensing fee.
Ultimately, this comes down to a business decision. Is the profit worth the potential risk of legal action (regardless of how far fetched). The cost of lawyers and the time it takes to defend one's self can be problematic -- and aggressive trademark lawyers know this, and use it for the client's.
I wish you every success with your business!
There is no way to predict what the game plan is. A cease and desist can sometimes end there is the issuer of the letter feels there is compliance and is not interested in more. But that's a choice the issuer makes. The law is such that infringement is actionable even without a warning or cease and desist letter. So in a legal sense, anything is possible.
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