# company name/design issue



## cadds182 (Jul 3, 2009)

So i own an online company called Third Coast Surf Wear. Some of my new designs just simply have the name "third coast". I was recently told that if i am going to print a design that it needs to include my entire company name - that i cannot just use the term "third coast" because it shows that i am taking ownership of the name "third coast" and can run into some possible legal issues since there are other companies out there that have the name "third coast" included. Can anyone out there please help me get more clarificationon this??


----------



## royster13 (Aug 14, 2007)

Who told you that?......By just using "Third Coast" are you infringing on someone else's trademark?....


----------



## cadds182 (Jul 3, 2009)

yes, i'm a ssuming thats probably what they may have been refering to. Im not sure....


----------



## TheBradley (Feb 21, 2011)

Check and see at USPTO if anyone has the mark registered for t-shirts and apparel. If so, you may very well have some issue, but if not and/or the mark is for a different type of goods, you could be fine.


----------



## cadds182 (Jul 3, 2009)

TheBradley said:


> Check and see at USPTO if anyone has the mark registered for t-shirts and apparel. If so, you may very well have some issue, but if not and/or the mark is for a different type of goods, you could be fine.


 

so i did the search at the USPTO. it shows at least 2 "third coast" that were "live". so does this mean im going to be running in to issues? I did just the "basic word mark search" on the USPTO site....


thanks for the help btw!


----------



## Comin'OutSwingin (Oct 28, 2005)

Are they for apparel?


----------



## kimura-mma (Jul 26, 2008)

"Third Coast" is a registered trademark for use on apparel. So it's important to take caution when using it. That said, using the mark as part of a t-shirt design is generally considered "ornamental." And since "Third Coast" is not exactly a "distinctive" mark, your use may not necessarily infringe on the trademark. If you are using custom labels or tags that feature your full mark "Third Coast Surf Wear," that will help prevent your shirts from being confused with the existing trademark owner's shirts. For better clarification, it's probably a good idea to consult an IP attorney. Even if you are in the legal right, the trademark owner can still take action to prevent you from using the mark. It still costs time and money to win in court. And there's always the chance you could lose.


----------



## cadds182 (Jul 3, 2009)

kimura-mma said:


> "Third Coast" is a registered trademark for use on apparel. So it's important to take caution when using it. That said, using the mark as part of a t-shirt design is generally considered "ornamental." And since "Third Coast" is not exactly a "distinctive" mark, your use may not necessarily infringe on the trademark. If you are using custom labels or tags that feature your full mark "Third Coast Surf Wear," that will help prevent your shirts from being confused with the existing trademark owner's shirts. For better clarification, it's probably a good idea to consult an IP attorney. Even if you are in the legal right, the trademark owner can still take action to prevent you from using the mark. It still costs time and money to win in court. And there's always the chance you could lose.


 

WOW!! thanks alot for the info!


----------



## yaqngie (Jul 1, 2013)

So as long as he has the full name somewhere on that shirt it should keep him safe am I correct in this thought?

For instance my company is No Regrets Athletics and we do athletic wear and custom screen printing. But there is a trademark for "No Regrets". By having the Athletics we should be good.


----------



## royster13 (Aug 14, 2007)

Only good if the other party does not have a boatload of money and wants to sink you.....If litigation ensues, usually the party with the most money wins and/or forces the other party to give up....


----------



## kimura-mma (Jul 26, 2008)

yaqngie said:


> So as long as he has the full name somewhere on that shirt it should keep him safe am I correct in this thought?


That's not exactly what I said. So I'll clarify.

Using a name on a shirt is considered ornamental and not sufficient to be eligible for trademark. Using the name on a label or tag helps the consumer identify the source of the goods, and therefore, makes the mark eligible for trademark.

So it's not about using the name "somewhere" on the shirt. It's about using it in a way that is specific to trademark eligibility.

Using the name on a label or tag should *help* against trademark infringement. But it is not completely safe. The IP owner can choose to take action if they want - whether they end up winning or losing in court is a different story.



yaqngie said:


> For instance my company is No Regrets Athletics and we do athletic wear and custom screen printing. But there is a trademark for "No Regrets". By having the Athletics we should be good.


Not quite.

"No Regrets" is the distinctive element of your mark. "Athletics" is just a description of the goods and services you provide. In the eyes of the USPTO, your mark is essentially "No Regrets," which is a direct conflict of the existing mark.

It's unlikely you would be able to get a trademark registration for your mark. And the owner of the existing mark could take action against the use of your mark.

For what it's worth, "Third Coast Surf Wear" may have the same issues with the existing "Third Coast" trademark.


----------



## yaqngie (Jul 1, 2013)

So even though our company is no regrets athletics we could still run into issues somewhere down the road


----------



## kimura-mma (Jul 26, 2008)

yaqngie said:


> So even though our company is no regrets athletics we could still run into issues somewhere down the road


Correct.

The word "Athletics" is doing nothing to differentiate your mark with the existing registered trademark.


----------



## yaqngie (Jul 1, 2013)

Thanks for the info. This was some insight for us. What about a logo with the name?

What are ways to get by these issues. I'm sure it would help both the OP and myself


----------



## kimura-mma (Jul 26, 2008)

yaqngie said:


> What about a logo with the name?


You can create a logo to go along with the name. But the mark would need to be registered as a "stylized design," not a "standard character mark." This means you would not be able to get broad protection rights to the name (the other trademark owner already has this). You would only have rights to the exact logo you create. And even then, it's possible the USPTO would consider your mark to similar to the existing one. And even if they initially approve your application, the existing trademark owner would still have the opportunity to oppose your application. So this would be an uphill battle. You should get professional advice from a trademark attorney as to what the risks are and how much you should expect to spend on getting this type of trademark registered.



yaqngie said:


> What are ways to get by these issues.


You need to add a distinctive element to your name. It needs to be sufficiently different from the existing one.

Or come up with a completely new name that is original.


----------



## 4 the Team (May 31, 2013)

Just adding my 2 cents. My trademark is "4 the Team" the USPTO has stated that "For the Team" and "Four the Team" are also covered under my trademark. This was a surprise to me, but a good one.


----------

