Intellectual Property Law

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I was selling on Amazon.com with my own private labeled

I was selling on...

I was selling on Amazon.com with my own private labeled product. With this product, I put the words ***** on the box and labels. Unknown to me at the time a company had filed a trademark for the phrase ***** in the US. Now I have received notice that their trademark was granted and I can no longer sell on Amazon.com. My question is if I withdraw my products from Amazon.com and ship them to Canada would I be able to sell them online in Canada? I have checked if they have a trademark in Canada and they don't. Would this be acceptable or would I get in the same trouble in Canada as I would in the USA?

Lawyer's Assistant: Is the trademark federally registered?

Is the US yes however not in canada

Lawyer's Assistant: Has anything been filed or reported?

What do you mean?

Lawyer's Assistant: Anything else you want the lawyer to know before I connect you?

Nope just wondering if I can sell my products in canada as there is no trade mark there

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Answered in 17 hours by:
3/8/2018
PhillipsEsq
PhillipsEsq, Attorney-at-Law
Category: Intellectual Property Law
Satisfied Customers: 22,413
Experience: B.A.; M.B.A.; J.D.
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Your Questions:

I was selling on Amazon.com with my own private labeled product. With this product, I put the words ***** on the box and labels. Unknown to me at the time a company had filed a trademark for the phrase ***** in the US. Now I have received notice that their trademark was granted and I can no longer sell on Amazon.com. My question is if I withdraw my products from Amazon.com and ship them to Canada would I be able to sell them online in Canada?

Response 1: Yes, you would be because U.S. trademark does not offer any protection in another country. In order to be protected, the company must apply for trademark again in the foreign country.

I have checked if they have a trademark in Canada and they don't. Would this be acceptable

Response 2: It would be acceptable unless the name is ***** ***** in Canada.

or would I get in the same trouble in Canada as I would in the USA?

Response 3: No, you would not.

Best wishes,

A 5-star positive rating to my response is appreciated so that I can receive credit for responding to your post. There is no additional cost to you for giving a positive rating. However, that is how I get paid for answering questions on this site.

Thank you for your cooperation.

PhillipsEsq
PhillipsEsq, Attorney-at-Law
Category: Intellectual Property Law
Satisfied Customers: 22,413
Experience: B.A.; M.B.A.; J.D.
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PhillipsEsq and 87 other Intellectual Property Law Specialists are ready to help you
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Customer reply replied 4 months ago
Hi PhilipsThank you for your resposne I have a follow-up question.Now they would like me to sign a document saying I will not sell any products with ***** on the packaging. Will this hold if I am selling in a country that they do not have a trademark for?

I am sorry for the delay in getting back to you.

We had power outage in my area and the power just came back on.

Kindly give me a few minutes to prepare my response.

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Your Question:

Now they would like me to sign a document saying I will not sell any products with ***** on the packaging. Will this hold if I am selling in a country that they do not have a trademark for?

Response: Unfortunately, yes if you sign the agreement with no limitation. Thus, you need to make sure that the agreement specifies that you cannot sell any products with that sign on the package in the United States. If the agreement does not have that limitation, then it would not be prudent to sign the document.

Also, it would be prudent not to sign the document at all since you started selling your product without knowing that the trademark application was in the works and ceased using the mark immediately after you were informed.

Thank you very much for the positive rating.

Best wishes,

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Customer reply replied 4 months ago
Thanks again for the quick replyYou say: "Also, it would be prudent not to sign the document at all since you started selling your product without knowing that the trademark application was in the works and ceased using the mark immediately after you were informed."
If I choose not to sign this agreement what would happen? Will they be able to take future action and possibly take me to court?Best wishes

They can threaten lawsuit. However, I do not see any basis for it since lawsuit is generally threatened if the person ignores the cease and desist notice. You did not ignore it. You immediately complied with the notice. So, I am not sure what the lawsuit would be. You cannot be forced to sign an agreement. Agreement requires mutual assent of the parties to agreement. Your assent cannot be coerced.

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