Friday, December 3, 2010

Trademark Infringement

Even though some will use a trademark and not register it is wise to register a trademark. This is important when others want to use the same or similar marks. It may be difficult to establish who had trademarks first. Trademark infringement lawsuits seem to abound in surfing. In an article by Jeff Schad Morgan Berk, co-founder of the New York Surf Film Festival sues over trademark infringement. She began using the trademark in August 2007. She registered the mark in 2007. In the following years she worked hard to develop the festival. The defendants Breuer, Cannizaro and Machemer began to control the festival and tell sponsors the originator was no longer a part of the festival. Most would pay to transfer the trademark. The defendants are infringing on her trademark because they are trying to change her brand, or create a new company, using the brand she created. This is a grey area.

A clearer form of trademark infringement is expressed in this article by Ryan Saxton Jim McGrath has created a successful surf shop called Bethany Surf Shop. Local shops have been bootlegging their shirts and using their brand on shirts they created for their stores. This confused customers who returned shirts to Bethany Surf Shop. These stores dilute the brand because they produce inferior products. When a brand works hard to create an image it can be tainted by other companies who use the brand and do not create quality. Consumers only see the brand, not the manufacturer, or retailer. They then believe the quality is the same in the different stores and no longer trust the brand. But what if you use the name, not the logo. If it is enough to call confusion and the courts believe you intentionally set out to deceive others, the plaintiff may have a case. To avoid this it is wise to use a noticeably different name and logo from any existing brand within the same industry. 

What about when a bigger company infringes on the names of trademark holders. In an article in Business Wire Kat House Productions LLC had Surf Chicks and Surf Chicks Get Wet. Mega brand Christian Dior Couture created Surf Chicks. However, Surf Chicks is not a unique mark nor is it used in another way outside of the brand's industry, for example Apple making computers and not fruit products. Therefore, one could argue Christian Dior did not tend to deceive, nor did they confuse their products, image, and reputation with that of Kat House Productions. Others could argue Christian Dior should have done research to make sure they were not using someone else's trademark. Because they both produce apparel they are not using the name outside of the industry that already owns the mark. This is another grey area. Again, it is important to use a different name and have due diligence in researching before settling on a brand name. A company such as Christian Dior has the resources to do such research.  

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