How JustAnswer Works:
  • Ask an Expert
    Experts are full of valuable knowledge and are ready to help with any question. Credentials confirmed by a Fortune 500 verification firm.
  • Get a Professional Answer
    Via email, text message, or notification as you wait on our site.
    Ask follow up questions if you need to.
  • 100% Satisfaction Guarantee
    Rate the answer you receive.
Ask Roger Your Own Question
Roger
Roger, Attorney
Category: Legal
Satisfied Customers: 31028
Experience:  BV Rated by Martindale-Hubbell; SuperLawyer rating by Thompson-Reuters
6704987
Type Your Legal Question Here...
Roger is online now
A new question is answered every 9 seconds

I have a question about trademarks. I sell custom shirts and

Customer Question

Hi. I have a question about trademarks. I sell custom shirts and tanks on an online marketplace. Tonight I had a customer ask for a tank that says "i'm a boy mom" where "I'm a" is in one font and color, and "boy mom" is in a different font and color.
I always research custom requests to make sure the phrases are not trademarked.
The term "boy mom" is trademarked for apparel -- but since "I'm a" is included in the phrase that she requested -- does that make it legal to create the shirt?
Submitted: 4 months ago.
Category: Legal
Expert:  Roger replied 4 months ago.

Hi - my name is ***** ***** I'll be glad to assist.

Expert:  Roger replied 4 months ago.

As long as the font is different and you're not recreating the exact trademarked phrase, there's likely no issue.

Expert:  Roger replied 4 months ago.

No one can prevent another from using any words or a short combination AS LONG AS it is not an exact replica of the trademarked logo/image/phrase, etc.

Customer: replied 4 months ago.
Great!! Another request that I've had is "But First, Tone It Up" where "but first" was in one font and color and "tone it up" was in another font and color.
"Tone it Up" is trademarked -- but since they requested a whole phrase where "tone it up" is just part of the phrase... the same thing would apply to this scenario, correct?
I just want to make 100% sure neither of these violate any trademark laws!
Expert:  Roger replied 4 months ago.

If you're not making an exact copy of some other phrase, you're generally ok because trademarks do not prohibit the use of common words -- even in short phrases.

Expert:  Roger replied 4 months ago.

The standard is whether a reasonable consumer would mistake your creation for the trademark --- and if you're using different fonts, not the same exact words, etc., that's a hard standard to reach.

Expert:  Roger replied 4 months ago.

Thanks for your question and please let me know if you need anything further. Thanks!

Customer: replied 4 months ago.
I do have one more question in reference to the tone it up tank I was asked to make. I attached a picture of the logo that I found, and a picture of a mockup of the text that I sent to the customer! Would this be a violation?
Expert:  Roger replied 4 months ago.

As I said, the standard for trademark infringement is whether or not a reasonable consumer would mistake the work you create for the trademarked product......That's a decision that you or your customer must make based on the look, the font, the wording, etc.

Expert:  Roger replied 4 months ago.

There's no way to guarantee that you'll never be sued....even if you do all you can and believe that you're in the right, someone can still sue you.....

Expert:  Roger replied 4 months ago.

That doesn't mean the person would win, obviously, but you may still face this at some point given your line of work.

Expert:  Roger replied 4 months ago.

Thanks again for your question and if you need anything further, please let me know.

Customer: replied 4 months ago.
I know there's no way to guarantee but I guess I'm confused about trademarks. I try so hard to be careful to not violate any laws. But it's hard to understand how it works in this case since these customers asked for an entire phrase that contain more than just the trademarked phrases.
Expert:  Roger replied 4 months ago.

The standard for trademark infringement is whether there's a likelihood of confusion that one mark would be mistaken for the other.........so as long as that simple rule is followed, you're generally going to have a viable defense.

Customer: replied 4 months ago.
In your professional opinion, would you advise against making these shirts?
Expert:  Roger replied 4 months ago.

I can't make that call as it is up to you.......We're not allowed to provide legal opinions and conclusions. All we can do is give the information that relates to your situation.

Expert:  Roger replied 4 months ago.

Thanks again for your question and good luck!

Related Legal Questions