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Alex Reese
Alex Reese, Lawyer
Category: Intellectual Property Law
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Experience:  Experienced in intellectual property law
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If company "A" has the following term trademarked (a line of

Resolved Question:

If company "A" has the following term trademarked (a line of cell phone cases) "Defender Series" , would I be violating their trademark by using the single word "defender" in the title of a listing of one of my cell phone cases for sale?
Submitted: 11 months ago.
Category: Intellectual Property Law
Expert:  Alex Reese replied 11 months ago.

Alex Reese :

hello

Customer:

Hello Alex

Customer:

Sorry I chose Mississippi by accident, I am in NY

Alex Reese :

most likely, yes, because it is a key word in their TM and you are using it in connection with the same class of goods (cell phone cases)....such that it arguably could likely cause consumer confusion or dilution of the mark

Alex Reese :

doesn't matter

Customer:

what is I clearly stated it was not their brand?

Customer:

if*

Alex Reese :

if you make it clear then that helps in some aspects, but they could still be upset with your use of the word in this manner to compete with them

Alex Reese :

it depends on the way you use it, it sounds like you are using it as a keyword for search purposes

Alex Reese :

there will be some risk, but it's not a clear cut violation since TM laws are very situation-specific and the law is not so predicable, so its best to avoid using TMs in that way

Alex Reese :

they could argue you are using their name to steer customers toward your product etc. (unfair competition)

Customer:

I just dont understand how such a generic word can be trademarked "defender". I sell cell phone cases that defend, I cannot call them defenders?

Alex Reese :

not when someone else is using it as a TM in a specific class of goods...."defender" is not generic/descriptive enough to not merit TM protection

Alex Reese :

if it was an essential word for description then it would arguably be an invalid mark but it could still achieve TM rights via "acquired distinctiveness"

Alex Reese :

you could probably use the word "defend" in a descriptive sentence but that's likely it

Customer:

What about in terms of comparison...what if i stated "my case has impact protection similar to the defender"

Alex Reese :

you could do that...but beware that if that is not true then that could expose you to a false advertising / dilution claim

Customer:

but not trademark infringement?

Alex Reese :

dilution is a form of TM infringement

Alex Reese :

its anything that harms the mark

Customer:

Well they would not be able to determine that unless they actually acquired one of my cases and did testing, correct? Even then they would have to prove a significant different in impact protect to prove not "similar" correct?

Alex Reese :

well yes but those are possibilities

Customer:

Yes but my cases do offer excellent and similar impact protection

Alex Reese :

botXXXXX XXXXXne is that when you use their TM, it exposes you to risks

Alex Reese :

especially when you are a direct competitor within the same product type

Customer:

The company giving me trouble is Otterbox, they design the defender series. Would I be in violation of their trademark if I stated within my listing "protection similar to otterbox defender". And, my cases did offer similar protection?

Alex Reese :

yes you would

Alex Reese :

if they wanted to pursue it they could have a decent argument

Customer:

Ok that answers my question. I will avoid anything even close to their name

Alex Reese :

that is the best approach

Alex Reese :

please don't forget to rate my response so I get credit

Customer:

Ok thank you Alex, I will give you an excellent rating

Customer:

Of course

Customer:

Thanks again

Alex Reese, Lawyer
Satisfied Customers: 3009
Experience: Experienced in intellectual property law
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