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Roger
Roger, Lawyer
Category: Intellectual Property Law
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Experience:  BV Rated by Martindale-Hubbell; SuperLawyer rating by Thompson-Reuters
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Hi Kirk, I printed a shirt that said the word "SwoleMates"

Resolved Question:

Hi Kirk, I printed a shirt that said the word "SwoleMates" on it...I was told to stop printing them because they own the trademark for "swolemates" but their logo looks nothing like my shirt and they cant own the word swolemate, can they?
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  Roger replied 1 year ago.

Kirk Adams : Hi - Thanks for requesting me!
Customer:

Hi Kirk

Kirk Adams : Common words and phrases can be trademarked if the person or company seeking the trademark can demonstrate that the phrase has acquired a distinctive secondary meaning apart for how it may be used in the usual sense.
Customer:

hmmmm

Customer:

they just have a shirt that says swolemates

Kirk Adams : Thus, common words usually can't be trademarked - -
Customer:

but they claim to own that trademark

Customer:

swolematesapparel.com

Customer:

my brand is forwarduprising.com and we just printed a shirt that says "Swolemates"

Kirk Adams : However, a word like this that isn't used in everyday conversation CAN be trademarked IF there is a distinctive use of that word and if it is related to a brand/product.
Customer:

http://instagram.com/p/dNNm9xtId0/

Kirk Adams : A trademark is legally defined as a "word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of goods of one party from those of others," says the U.S. Patent and Trademark Office. There are two key elements in that definition: 1) Trademarks protect commercial products and services. Trademarking "swolemates" won't stop you from using it in everyday conversation. 2) Trademarks identify the source of goods and services. Therefore, either your trademark must be inherently distinctive, identifying you as the source of a product, or your trademark must have acquired distinctiveness—you must prove that the public identifies your trademark with your particular good or service and with you as the source of that good or service.
Customer:

http://swolematesapparel.com/shop/mountain-bike

Customer:

are you allowed to look at these sites?

Kirk Adams : IF the other business can't do this, then you may have a strong claim that you're not infringing on their claimed mark.
Kirk Adams : Yes, I've looked at them.
Kirk Adams : The MAIN issue when you're dealing with a similar/same name and potential copyright infringement, courts generally look at whether or not a reasonable consumer would mistake your business for theirs, and vice versa.
Customer:

hmmm

Customer:

if you looked at both shirts would your legal opinion say that I am infringing on them? I dont think I am the only one that a "Swolemates" shirt and my design looks different

Kirk Adams : IF you're selling the SAME type of product and if your names look similar, then a court would look at whether or not a consumer could be confused.
Kirk Adams : I think the biggest issue for you is that the term swolemates doesn't have a distinctive brand that is recognized or linked to some specific product.
Customer:

they are both shirts...does that classify as the SAME? the words are the same, but the art work is NOT

Customer:

I am not using it as a brand...its more like a quote

Customer:

I am not the one who claims to have trademarked it

Kirk Adams : Thus, this other company would have to try and prove that this term is particular to their brand and that your use of it is improper, and it doesn't appear that this is the case.
Customer:

All of their shirts say "Swolemates" and that is the name of their brand and they think that my using the term infringes

Kirk Adams : If you were using the name "Gold's Gym" or "Nike" or "Boflex", etc. in a design, you'd certainly have a problem.
Kirk Adams : Understood.
Kirk Adams : WHETHER OR NOT you are infringing on them depends on whether a reasonable consumer would confuse your shirt to be a product of this other company.
Kirk Adams : If so, then you could be liable; if not, the you would not be liable.
Customer:

if my shirt had that phrase, but my logo, my consumers would NEVER think that the shirt belonged to Swolemates Apparel

Kirk Adams : That's a judgment call that you can make - - and that's what a court would do if it were to decide this issue.
Customer:

so its not a clear cut case is what you are thinking

Customer:

and seeing our shirts they dont look similar

Kirk Adams : NO trademark infringement issue is clear cut!! Just because your shirts don't look similar doesn't get you around the issue. The phrase/word appearing on the shirt is the problem because if that's their brand, and if it's a generally recognized brand in the industry, then there's room for a court to find that a reasonable consumer could mistake your shirt as being theirs. Thus, it's certainly possible that you could get sued over this.
Kirk Adams : Usually, the risk isn't worth the reward because IF you are sued - - even if you end up winning - - you're going to endure thousands in legal fees and probably a year or more in litigation.
Customer:

ok they are tiny little brand with 3-5k followers...that should not classify them as recognized in the industry

Kirk Adams : Thus, it would take selling hundreds of shirts in order to finance your legal battle.
Customer:

they would have legal fees as well though correct

Kirk Adams : Absolutely.
Kirk Adams : ....and I'm not saying they're right and you're not. I'm just saying that there's no clear cut answer.
Customer:

what would classify them as a recognized brand in the apparel industry

Kirk Adams : These issues are very difficult because the "reasonable person" standard is used and who knows what a judge may think a reasonable person may conclude.
Customer:

is there a thresh hold?

Customer:

people can then create brands to corner every name and phrase out there...

Kirk Adams : No, there's no threshold number for sales or gross/net profits, etc.
Customer:

are there any guidelines to be considered recognized?

Kirk Adams : Instead, as stated above, the trademark would have to IDENTIFY an source of goods/services.
Customer:

no one would think of their brand when saying the words swolemates

Customer:

they are not at that level they have 8 shirts and only less than 5k followers

Kirk Adams : If they use the word as the name of their company, etc., then it could be a little harder for you.
Customer:

but anyone could just start up hundreds of little companies to close of anyone from using anything on Tee shirts?

Kirk Adams : Also, if you were using the name BEFORE they were, then you'd have a copyright under common law that would allow you to use the name regardless of anthing else because you were using it first.
Customer:

Swolemates is a term thats been around long before both they and I were printshops

Customer:

so neither would get copyright for sure on that one

Customer:

thats like saying Soulmate

Kirk Adams : The name has to be being used in commerce in order to claim trademark protection.
Customer:

yeah they have a web site that sells 5-8 shirts with that word on it

Kirk Adams : It is VERY HARD to trademark a single word, but it is possible - NIKE, ADIDAS, TARGET, etc. However, the words can still be used if used in a different business area, different fonts, different symbols, etc. - - ENOUGH TO MAKE A CONSUMER KNOW THAT THEY'RE NOT DEALING WITH THE OTHER COMPANY.
Kirk Adams : For instance, Nike Plumbing Service, Target Pest Control, etc.
Customer:

I see...thats my answer...

Customer:

we used a different font and definitely people will not mistake my shirts for their shirts

Kirk Adams : Thus, the standard is whether or not a reasonable consumer would mistake your business product as that of the other company.
Customer:

ok thank you

Customer:

I believe I have a solid enough understanding...although I do see that there is a strong enough case for them to try legal on my

Customer:

me

Kirk Adams : Here's a good link you can read that discusses this issue, including the reasonable person standard/likelihood of confusion that we've discussed here: http://en.wikipedia.org/wiki/Trademark_infringement
Customer:

when they contact me...how can they show proof that they own the trademark? and not just BSing me or scaring me?

Customer:

just cause they are LLC doesnt mean anything to me that I know of

Customer:

Kirk?

Customer:

sir?

Kirk Adams : Sorry - - I was contacted by another customer and was helping him.
Customer:

no worries

Kirk Adams : You have a right to demand proof that they have a copyright, and they may be totally bluffing you.
Kirk Adams : Pardon - trademark not copyright.
Customer:

I just checked the they filed in march 2013 and currently is 7/30/13 "Extension of time to oppose received"

Kirk Adams : However, there is a such thing as a common law trademark, which is an unregisered trademark. If it has been used in commerce, then they can claim a trademark to the phrase, but the standard of a reasonable person's likelihood of confusion is still the standard.
Kirk Adams : Also, the fact that they're an LLC really doesn't make any difference in terms of the trademark claim.
Customer:

thank you good night bud

Roger, Lawyer
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