# Trademark or Not When Someone Already Sells Same Phrase



## skip77 (Mar 11, 2010)

Members - please pardon if this is a copy of another topic. I have been planning to market my own logo on tshirts and hoping to expand to other garments etc if sales take off. My design is a logo consisting of a word phrase that is stylized into an image that represents the phrase. I got a free trademark search online and found the phrase is not trademarked at least in apparel. Today I found the same phrase being sold on tshirts possibly going back as far as 30 years. I was stunned since I had never heard or seen the phrase until I came up with it last year for Christmas gifts to my friends. The other shirt company does not stylize the phrase - it is plain text with other graphics accompanying it. Here are my questions:

1. Although the other company did not register a trademark is it true that they have priority over me even if I register my own version successfully, because they have been selling the phrase before me?

2. Would my trademark registration be different because my design is different even though the word phrase is exactly the same? Or, would the other company precedent still prevent me from getting the trademark or make my trademark meaningless since they have the precedent or priority?

3. Does this mean I cannot print my design and sell them?

4. Does it mean I should not bother to try for a trademark or that I should?

I hope these are not stupid questions or old and over-done at the forum.


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## dptk (Aug 14, 2009)

I'm not a lawyer, 

if the secret phrase is their brand name I'd say you could have issue in the future

if the secret phrase is just a catchy phrase they print along with a bunch of other phrases I'd say your ok

I am not authorized to provide legal advise,


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## skip77 (Mar 11, 2010)

dp - understood that you are not a lawyer - thanks for your thoughts. the other company sells a variety of shirt designs and do not appear to be using the phrase i am interested in as a brand or logo but apparently they have some kind of festival every year and offer the tshirts for that. i'm wondering if a trademark for my logo would have any value since the other company makes a shirt using the same word phrase?


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## kimura-mma (Jul 26, 2008)

This is a tough one, Skip. I'll start off by saying that you will only get a real answer from an attorney. Other than that, it's all just opinion which may not help you move forward.

That said, it's typically tough to get a phrase trademarked for use on t-shirts unless it's a legit part of the branding, not just one of many graphics. But at the same time, they have been using it first, so for you to come along and use the same phrase, could be considered infringement because you may be creating confusion in the marketplace. It's entirely possible they may not care. But if they do, they could try to sue you.



skip77 said:


> 1. Although the other company did not register a trademark is it true that they have priority over me even if I register my own version successfully, because they have been selling the phrase before me?


Yes. First use in commerce will usually win. The fact that you want to use it as a brand name, and they are just using it as a graphic, may or may not matter. Regardless of *how* it is used, they used it first.



skip77 said:


> 2. Would my trademark registration be different because my design is different even though the word phrase is exactly the same? Or, would the other company precedent still prevent me from getting the trademark or make my trademark meaningless since they have the precedent or priority?


Since they don't have an existing trademark, the examining attorney would have to find their shirts online while searching. If they find it, your application may be rejected. If they don't find it, you may get it registered. But it's also possible the other company could oppose your application, if they find out about it.

I don't think your mark would be considered different than theirs, even if the design is different, because they are in the same category. That would set a dangerous precedence, and everyone would try to trademark a famous name with a different logo design.



skip77 said:


> 3. Does this mean I cannot print my design and sell them?


Well, you could do it. But it's possible they could sue you if they wanted to.



skip77 said:


> 4. Does it mean I should not bother to try for a trademark or that I should?


As you can see, there are a lot of variables. You should consult an attorney and see what they say. But it seems like you should go the safe route and use a brand name that is more original. Maybe you can still use your logo and phrase as a graphic, just not the brand name.


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## skip77 (Mar 11, 2010)

kimura-mma - thanks for your thoughts. i have wondered if it would be wise or unwise to contact the other shirt maker directly, introduce myself, explain my own intentions and ask their thoughts? as you suggested i need to get the view of a lawyer for sure. i have a friend that is a lawyer and have contacted him to see if he can help me sort this out. hope he can. thanks again for your thoughts.


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## charles95405 (Feb 1, 2007)

A friend who is a lawyer who gives advice in field in which he/she lacks experience is a not a friend. However I would ask the lawyer friend for a referral to an IP attorney...just to be sure


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## skip77 (Mar 11, 2010)

charles - thanks for your thoughts. my lawyer friend advised me that trademarks are a highly specialized field and the best he could do would be to refer me to another friend of his that does specialize in the field - so you are exactly right! in the meantime i have taken a shot at the US Trademark office - will see if anyone there is willing to answer my questions.


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## dptk (Aug 14, 2009)

be sure to keep this thread updated when you find something out !


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## skip77 (Mar 11, 2010)

dp - i certainly will. I asked all my questions to US Trademark office and will see if they answer. I advised that with their permission I will post their answers here at the tshirt forum to help others with same questions.


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## skip77 (Mar 11, 2010)

Well - good news and bad news. Good news is the Government replied to my questions. Bad news is they would not answer any of them stating I needed to consult a lawyer and that the gov does not offer legal advice  I went back to them asking for the usual booklet package on trademarks and they replied again to say it was in the mail. Good enough! This is what I have so far.


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## Fire_fidget (Mar 23, 2010)

This may be of help...
Can I Copyright a Phrase?
How to Copyright a Phrase or Slogan | eHow.com
this one is a UK page but has international inks...
Your copyright

Remember laws concerning copyright, trademarks and patents change from country to country. 

Get legal advice. Especially, if the previous user of the phrase has the money to sue.


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## skip77 (Mar 11, 2010)

Thanks Fire - that is a start. While waiting for the packet from US Trademark office I have forwarded a description of my intentions and some questions to a corporate patent and trademark lawyer that works at the same company as me. I am hoping that he can offer advise unofficially, even though my interest is not work related.

I have another observation now that I hope some of you will comment on. I searched the phrase I am interested to trademark, in ebay. Remember that I have found at least 2 companies or entities on the web that have been making shirts with the same phrase. Well now I have found the same phrase offered on shirts, stickers and decals in ebay by a number of different sellers. So the list of people using the same phrase is growing - now up to at least 10. I suspect that this phrase has not been challenged by anyone or that no enforcement has been brought by whoever was first to use it. Otherwise, there would not be so many people printing the same phrase. Your thoughts?

From the links that Fire pasted above, it appears that the strength of a trademark is only as good as the effort to enforce it. Also per links pasted by Fire above, it appears that short word phrases are certainly difficult to copyright but can be trademarked. This leaves me back at my starting point - wondering if any real value could be gained even if a trademark was successfully gotten? Interesting dilemma given the discoveries of the same phrase in use before me.


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## kimura-mma (Jul 26, 2008)

skip77 said:


> Well now I have found the same phrase offered on shirts, stickers and decals in ebay by a number of different sellers. So the list of people using the same phrase is growing - now up to at least 10.


All signs are pointing to the fact that you shouldn't even try getting it trademarked. It's already in use. You're going to be wasting your money by applying.



skip77 said:


> I suspect that this phrase has not been challenged by anyone or that no enforcement has been brought by whoever was first to use it. Otherwise, there would not be so many people printing the same phrase.


 It's possible that the phrase cannot be trademarked for whatever reason. But, yeah, it doesn't seem like the other companies are too worried about it. This really won't have an effect on your chances of trademarking it.



skip77 said:


> it appears that the strength of a trademark is only as good as the effort to enforce it.


Agree 100%.



skip77 said:


> it appears that short word phrases are certainly difficult to copyright but can be trademarked.


It's considered difficult to trademark a phrase for use on t-shirts when the phrase is not the brand name or directly associated with the branding or marketing of the brand.



skip77 said:


> This leaves me back at my starting point - wondering if any real value could be gained even if a trademark was successfully gotten?


Considering all the usage you are finding, it seems highly unlikely you will be granted trademark registration. But, yes, even if you did, there wouldn't be much value. Any of the previous usages could contact you and contest the validity of your registration.

WWF is a good example. The World Wrestling Federation used it for years before the World Wildlife Fund came along and claimed they used it first and wanted to enforce it. And they won.



skip77 said:


> Interesting dilemma given the discoveries of the same phrase in use before me.


It shouldn't be much of a dilemma anymore. You should pursue another name. Well, obviously, you should wait and see what the attorney says. But with all the usage out there, I'd be shocked if an attorney advised you to spend money on an application.


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## skip77 (Mar 11, 2010)

Kimura-mma, thank you for the thorough response. Rather than give up on the phrase, I am more inclined to just go ahead and start printing it. My intent is far different from everyone elses so far that I have found using it, however. My intent is exactly what you mentioned - using the phrase and my sylized logo of it as a brand like the aligator for IZOD etc. This intent on my part is why I am so interested in trademark prospects - for everyone else using the phrase so far, who have not used it as a brand but simply another shirt or product they offer, it is different. For me, it is the brand I want. I may be told flat out as you and others have suggested, that there is nothing to be gained with a trademark application or grant. I am most keenly interested to learn whether all of my discoveries will prevent me from using the logo and phrase - I am hoping not because for me, this concept is a once in a lifetimer.

Heck for all I know some here in the forum may have been printing the same phrase. Mainly my usuage is beyond the phrase itself because I have designed the phrase into a shape and no one else has done that yet. I am hoping that tiny detail makes a difference. When I know more about my position I may post an image to show my design and see if anyone here hits on it. Thanks again.


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## dptk (Aug 14, 2009)

I'm no trademark expert, but I think you will have a tough battle getting a trademark on a short phrase in use by many others already, even if you plan on using it as a brand. Now if you wanted to use it as a brand


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## kimura-mma (Jul 26, 2008)

skip77 said:


> My intent is far different from everyone elses so far that I have found using it, however. My intent is exactly what you mentioned - using the phrase and my sylized logo of it as a brand like the aligator for IZOD etc. This intent on my part is why I am so interested in trademark prospects - for everyone else using the phrase so far, who have not used it as a brand but simply another shirt or product they offer, it is different. For me, it is the brand I want.


If the phrase were not in use, then your intent would matter. But it's in use. Your intent doesn't give you priority over the other uses. You can be sued at any time by anyone who has been using it before you.



skip77 said:


> I am most keenly interested to learn whether all of my discoveries will prevent me from using the logo and phrase - I am hoping not because for me, this concept is a once in a lifetimer.


No, it won't prevent you from using it. You just won't be able to use it risk free.


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## skip77 (Mar 11, 2010)

K - thanks again for your interpretations. You have described what I think likely to be the outcome. The only other recourse I might have as a last resort might be to contact all the sellers I can find, introduce myself, describe my intention and ask if they have any problem with me pursuing my interest since we are in different parts of the country etc... I have never seen a shirt with this phrase in my area... and never knew it existed beyond my own idea until recently. Maybe I will get lucky and they won't mind? I don't know. Thanks again.


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