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Thomas Swartz
Thomas Swartz, Lawyer
Category: Intellectual Property Law
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Experience:  Twenty one years experience as a lawyer in New York and New Jersey. Former Appellate Law Clerk.
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I have a label on a product that uses many of the same colors

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I have a label on a product that uses many of the same colors that a competitor uses, however I do have a different name for my product that I applied a trademark for. I sell both my competitor product as well as my own.

My competitor has called me to state that he will sue me for trade redress because my label looks very similar to his, because of the colors and fonts used. My competitor does not have a trademark or copyright on the design of the label only his trademark, which I am not using at all.

Can he still succeed in suing me, and win?

Yes it is possible. The legal term involved in your situation is not "trade redress", but rather "trade dress."

"Trade dress" is defined as the total image or overall design or appearance of a product or its packaging. And Section 43 of the The Lanham Act creates a federal cause of action for unfair competition where someones uses any word, term, name, symbol, or device, either on the goods themselves or on the container of such goods which is likely to cause confusion, or to cause mistake as to the origin of the goods.

You can find this law in 15 U.S. Code § 1125(a), and the exact text of the law provides as follows:

15 U.S. Code § 1125(a) - False designations of origin, false descriptions, and dilution forbidden

(a) Civil action

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

And a claim under this law is not restricted to registered trademarks. It can apply to the entire look of packaging, containers, etc.

So, if your label looks similar enough such that consumers might be confused, he would have a legitimate claim for which he could bring a civil lawsuit. He would not necessarily need a registered trademark.

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