® Trademark Infringement

jayyy's picture

I did some work for a friend who sells Kayaks a year ago and I gave his business a tagline to go with his new identity. I have just seen a commercial for a cruise operator who uses this tagline (for about 5 years). I ran a search on the USPTO and verified this.

I did not attempt to register his tagline so it is unprotected.
My question is, is this an infringement of a ® registered trademark if we are in different business' with entirely different objectives?

aluminum's picture

Half jokingly/half seriously, I'll say: The answer to most intellectual property issues these days lies in the hands of the party with the highest paid lawyers.

jayyy's picture

Well, fully seriously, that is not us :)

I doubt they care or even know right now and it is certainly not going to turn into a lawyer issue because he does not have the budget for that and there is minimal investment in the tagline anyway.

What worries me is if I do more work for him, online, advertising and possibly retail, would it be a wise idea to move away from further investment in this?

jayyy's picture

I actually just found another LIVE TM registrant and they are a wheelchair manufacturer :)

Ironic but interesting, as this could mean that if you operate in entirely different business, there can be two or more identical taglines for different business.

cuttlefish's picture

Since they are both boating related companies, it could be argued that the nature of the business is sufficiently similar and this is enough to establish intent to deceptively connect the two companies by use of the same or similar trademark.

At least a tagline is more easily changed than a primary corporate identity. If the kayak company is served with a cease-and-desist letter, it would be easier to cave in and change rather than going through the expense of challenging.

IANAL-TINTBCALA

jayyy's picture

I just found this on the USPTO:

Is registration of my mark required?

No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,

* constructive notice to the public of the registrant's claim of ownership of the mark;
* a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;

*******
So that means the mark is only exclusive when used in connection with the goods/services LISTED in the registration.

So I guess since he does not sell cruises I'm OK

cuttlefish's picture

If he rents kayaks and/or conducts kayak tours, that could be construed as "selling cruises". They always try to get you with those generalized definitions.

aluminum's picture

The old example is Delta Faucets and Delta Airlines. Easy to tell they are in completely different markets and coexist just fine.

A more recent blurring of this is the example of Apple Computers and Apple Records. Traditionally, though they battled, it was decided they, indeed were in different markets and could coexist.

Alas, once Jobs opened the iTunes store, things began to blur and, ultimately, it was decided they were both in the music industry.

So, yea, Kayaks aren't cruises. But Kayaks and Cruise Ships are both boats.

If your client is hoping to sell Kayaks throughout a huge region/marketplace, then maybe it makes sense to invest in some IP research and protection up front. But if it's just a local market, then it probably makes sense to just continue on and then if/when the big lawyers ever come knocking, rename the business then.

But, as always, IANAL.

kegler's picture

I did not attempt to register his tagline so it is unprotected.
My question is, is this an infringement of a ® registered trademark if we are in different business’ with entirely different objectives?

Sadly, if you did not register, let alone attempt to register then no, it is not a ® registered trademark. Unless it is a truly unique tagline that no one else would have independently come up with, odds are not good in making any claims against them.

jayyy's picture

Kegier,

I think you misread my post. I know it's not registered because I did not register it! It is a TM though as it is his tagline. I just wanted to know if it could co-exist in different areas of business.

Aluminum: I think you hit it on the head. We will continue until we have a problem. At which point we could always just change the tagline :)

Thanks for all of your help guys.

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