Intellectual Property Law
Intellectual Property Law Questions? Ask a Lawyer
Sorry I chose Mississippi by accident, I am in NY
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
what is I clearly stated it was not their brand?
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
it depends on the way you use it, it sounds like you are using it as a keyword for search purposes
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
they could argue you are using their name to steer customers toward your product etc. (unfair competition)
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?
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
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"
you could probably use the word "defend" in a descriptive sentence but that's likely it
What about in terms of comparison...what if i stated "my case has impact protection similar to the defender"
you could do that...but beware that if that is not true then that could expose you to a false advertising / dilution claim
but not trademark infringement?
dilution is a form of TM infringement
its anything that harms the mark
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?
well yes but those are possibilities
Yes but my cases do offer excellent and similar impact protection
botXXXXX XXXXXne is that when you use their TM, it exposes you to risks
especially when you are a direct competitor within the same product type
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?
yes you would
if they wanted to pursue it they could have a decent argument
Ok that answers my question. I will avoid anything even close to their name
that is the best approach
please don't forget to rate my response so I get credit
Ok thank you Alex, I will give you an excellent rating