Hello all...

a general question... I have certain designs in my store, such as the words "no hablo" on an infant bodysuit, or "save the date for my bar mitzvah" on an infant bodysuit.

A company who sells infant bodysuits only, I believe over the web and in retail stores has designs with the same wording. He is threatening me with a lawsuit unless I remove these and about 7 other designs.

These phrases are not trademarked... do I really have a risk here? How can he prove that he created "no hablo" first... if you do a google search, hundreds, if not thousands come up.

any information or advice would be helpful as I am not looking to start a problem or end up with legal fees.

thanks.

T

This is not legal advice. For that, you should ask an attorney, just remember that in each case before a court, half of the lawyers will be declared wrong. That said:

Unless your designs closely resemble the other company's merchandise, and a strong case can be made that you copied their intellectual property, I would tell them to go pound sand.

The phrases you mentioned are in the common vernacular.

quote:

These phrases are not trademarked.

How do you know that the phrases are not trademarked? Trademarks do not have to be registered to be protectable. The fact that something is not in the TESS database does not mean it is not trademarked. It only means that you didn't find it in the TESS database.

In responding to such demands it is critical to understand the law in that area. Rejecting a claim out of hand, without a significant understanding of the law, can be really expensive. If a person decides to reject a claim and not get an attorney then it is critical to at least get enough education on trademark law to know that (a) registration is not required and (b) common phrases can be used and protected as marks. Moving from accidental infringement to intentional infringement (i.e. ignoring a claim) is very risky.

Your local library will have some good books on trademark law. Those published by Nolo press are intended for non-lawyers. While the better solution is see a lawyer getting a book written by lawyers is a heck of a lot more likely to get you safe advice than asking people with unknown experience and knowledge.

Any company can send you a letter telling you stop.

It all comes down to what you wish to do.

This has happened to me in the past (unless the person can present a trademark/copyright depending on the situation) and my usual response has been that I am claiming right of independent creation, etc., etc., etc. You can always get an attorney involved later but once they are involved all it does is cost you money.

Ask them if their design/phrase trademarked/copyrighted, if so as of when and what classification. Ask for a specific list of what their objections were exactly - i.e., is your design too close to theirs or are they trying to use the common phrases?

The key to self-help is to have at least enough knowledge to know the know what questions to ask, and most especially not to display lack of knowledge.

For example
Right
"What is the basis for your claim of trademark in the phrase ___"
Wrong
"You can't claim trademark in that, it is a commonly used phrase!!!!"
The first will get you important information IF you know the basic criteria for claiming trademark (registered or unregistered). Evaluating their response for meeting that basic criteria helps you decide whether they are clueless, or whether you have further risk assessment needs.