# Trademark Issues, Please help



## akumaevolution (Dec 14, 2011)

Recently my Facebook page for my clothing line got shutdown by Fb without prior notice because someone reported on my page with copyright infringement issues. My other social sites such as Tumblr and online store is also being targeted. Let me use 2 mock up business names to explain. The person who filed the report has registered trademark with USPTO with the business name "Epic", selling shirts. However, my clothing line is called "Epic Apparel". I trademark my company with the name "Epic Apparel", and another trademark with our logo with the word "Epic" below the logo, both are still under reviewing process. However, I have an approved factitious business name statement, seller's permit, and business license. There are many other companies such as American Eagle and American Apparel both used the same term "American". If we applied the same context to both American Eagle and American Apparel, can this be a problem? What are your thoughts? I am quite frustrated with the situation right now. Any help or advice??? Thanks.


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## tcrowder (Apr 27, 2006)

akumaevolution said:


> However, my clothing line is called "Epic Apparel". I trademark my company with the name "Epic Apparel", and another trademark with our logo with the word "Epic" below the logo, both are still under reviewing process.




There is what seems to be the issue. You operate under the name Epic Apparel but your logo states Epic. Thus the trademark issues, if you add Apparel to your logo my guess is you would be fine.


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## kimura-mma (Jul 26, 2008)

The word "apparel" is not a distinctive element of a trademark. It is simply a description of the goods sold by the brand. So if you use the same examples but remove the word "apparel," it becomes clear that "American Eagle" and "American" are different marks. But "Epic" and "Epic" are the same mark.

Unfortunately, it is highly unlikely you will get your mark "Epic Apparel" approved by the USPTO. And the "Epic" brand clearly has legal recourse to prevent you from using it. It is completely understandable that you are having issues with this. If "Epic" is already federally registered as a trademark for use on clothing, you are infringing on their mark.

Your factitious business name, sellers permit and business license are irrelevant. Those are completely different processes than a trademark. You can probably keep "Epic Apparel" as your business name. But you will need a new name for the actual brand which appears on the shirts, labels, tags, marketing materials, website, etc.


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## Rusty44 (Apr 28, 2008)

kimura-mma said:


> The word "apparel" is not a distinctive element of a trademark. It is simply a description of the goods sold by the brand. So if you use the same examples but remove the word "apparel," it becomes clear that "American Eagle" and "American" are different marks. But "Epic" and "Epic" are the same mark.
> 
> Unfortunately, it is highly unlikely you will get your mark "Epic Apparel" approved by the USPTO. And the "Epic" brand clearly has legal recourse to prevent you from using it. It is completely understandable that you are having issues with this. If "Epic" is already federally registered as a trademark for use on clothing, you are infringing on their mark.
> 
> Your factitious business name, sellers permit and business license are irrelevant. Those are completely different processes than a trademark. You can probably keep "Epic Apparel" as your business name. But you will need a new name for the actual brand which appears on the shirts, labels, tags, marketing materials, website, etc.


I agree ... and I would like to add one more suggestion. Contact the assigned attorney from the USPTO .. they are very helpful. I was turned down my first try and after calling them, they told me why and then guided me to help me get registered. I self filed, but called my patent attorney for some suggestions too. But he gave me the same information the USPTO attorney gave.
Instead of waiting for them to send you a notice take the first step and contact them. You can then begin to make the necessary changes, if needed right away.


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## GN (Aug 1, 2011)

akumaevolution said:


> ..The person who filed the report has *registered trademark* with USPTO with the business name "Epic", *selling shirts.* ......


 
Assuming this other clothing brand filed thier TM first and/or started selling thier product under that name first, then they are the righful owners. If you were first.. then prove it. 

I was hoping for you, that it was another brand that wasn't in the same catagory as you. (like maybe they sold surfboards or something) but after re-reading... it looks like you will lose this and the other company is only doing what they are supposed to do. 

Kinda disheartening that FB shut you down with no notice though. Obviously the Epic people had definitive paperwork showing they are the rightful owners. 

I'd do what Rusty said and call TM office. They are nice ppl and will guide you. Maybe change to "EPIC LIFE Apparrel" or something. I'd also write FB and show them where you TM'd your name, have all the license etc and are now in the process of changing all that so hopefully they will give you yoru page and all that was on it back (with the new name change).. I kinda doubt they will do that, but worth a try.

Did you not do a TESS seach before you filed? I'm only asking because I have several TM's goign through the system but I did a search and didnt find anything. I'm going to be highly upset if mine come back in use somewhere as it appears yours did.


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## GN (Aug 1, 2011)

kimura-mma said:


> The word "apparel" is not a distinctive element of a trademark. It is simply a description of the goods sold by the brand. So if you use the same examples but remove the word "apparel," it becomes clear that "American Eagle" and "American" are different marks. But "Epic" and "Epic" are the same mark.
> 
> Unfortunately, it is highly unlikely you will get your mark "Epic Apparel" approved by the USPTO. And the "Epic" brand clearly has legal recourse to prevent you from using it. It is completely understandable that you are having issues with this. If "Epic" is already federally registered as a trademark for use on clothing, you are infringing on their mark.
> 
> Your factitious business name, sellers permit and business license are irrelevant. Those are completely different processes than a trademark. You can probably keep "Epic Apparel" as your business name. But you will need a new name for the actual brand which appears on the shirts, labels, tags, marketing materials, website, etc.


Very good explanation.


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## akumaevolution (Dec 14, 2011)

As a result, is there absolutely zero chance of keeping my current business name? Its been half a year and we finally have some sort of recognition for our name. Any point of direction or have anyone here experienced this before? Would it be really hard to switch our current business name all of a sudden? I was completely sad when Fb shuts down our facebook page without any prior warning. We have a hard earned fan base of about 900 followers, and its now gone. We are trying our best to contact fb in hope of reopening our page in any possible way.

In addition, I got a response from someone on Yahoo Ask stating the following:

"However, it may be worth pointing out that using the SAME word is not considered "identical" to the same word IN COMBINATION with other words, especially if the same word is also an ordinary "dictionary" word (not "coined" like Kodak or Exxon, which are inherently distinctive). ACME Widgets would be unlike ACME Co. because "Widgets" makes it a distinctive combination. The actual determination, however, sometimes has to go to court or arbitration.

There are, for instance, different companies register and use "Wel-bilt" (Northern Tool) and "Welbilt" (Enodis), the first with respect to "power tools, hand tools, tool carriers" (since 1996), the latter with respect to "commercial food prep and storage equipment" (reg'd 2010), and "electric toasters, ovens and grills" (1998), having allowed "commercial food mixers" (1985) registration expire. 

NorthernTool inserts the following disclaimer into each advertisement: "Not related to WELBILT® products of Enodis companies". You would imagine they wouldn't do that unless required.

The point is, you can sometimes negotiate "concurrent use" with other companies using a similar brand in a similar field, especially if you were each growing large markets that only later overlapped.

Compare, on the other hand, "Star Class" clothing of Hilfiger; they were sued by a small yachting organization that had already been selling "Star Class" brand clothing. Hilfiger chose to ignore the warnings of its legal counsel to do a more "comprehensive search" prior to using the brand. They were tied up in federal court for over five years, having sold over $800,000 worth of clothing with the brand and not eager to "disgorge" the profits to the plaintiff."


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## kimura-mma (Jul 26, 2008)

You shouldn't have a problem keeping the *business name*. But you will have problems if you keep using the *brand name*.

It is definitely possible to add a distinctive element to your mark to help get it registered as a trademark, and more importantly, continue using the mark. But it's best to consult an attorney before proceeding. Or you could contact the USPTO examining attorney.


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## Rusty44 (Apr 28, 2008)

The power tools and food industry are two different class codes ... you appear to be in competition within the same class code (apparel) ... first one in wins. If you were to add another word (not already taken) to your name as suggested above (Epic Appaprel) could solve the problem. When doing a search you will only find the search names that have been registered, not in process. Trademark is nation wide whereas a Business Names are registered within the State you reside. The next State over could have the same Business Name as yours with no conflict, because of where they are registered.

Again, call your USPTO attorney and get it from the horse's mouth, so to speak.


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## kimura-mma (Jul 26, 2008)

Rusty44 said:


> If you were to add another word (not already taken) to your name as suggested above (Epic Appaprel) could solve the problem.


The word "apparel" is descriptive, not distinctive. So that's not likely to help. Adding a distinctive word, like Epic Liberty or Epic Underground, would probably help more.



Rusty44 said:


> When doing a search you will only find the search names that have been registered, not in process.


Any mark that has been given a serial number by the USPTO, which includes applications still being processed, will show up in TESS searches.

The distinction between applications and registrations are the registration number. Applications will have a blank registration number. Registrations will show the number.


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## akumaevolution (Dec 14, 2011)

kimura-mma said:


> The word "apparel" is descriptive, not distinctive. So that's not likely to help. Adding a distinctive word, like Epic Liberty or Epic Underground, would probably help more.
> 
> 
> Any mark that has been given a serial number by the USPTO, which includes applications still being processed, will show up in TESS searches.
> ...


What if for example our line is called SE Super Epic vs theirs is just Super Epic? Because we register a trademark with the abbreviation in the beginning "SE Super Epic" instead of just Super Epic. And our logo is distinctive and does contain the word "SE", with the word "Super Epic" at the bottom of the logo.

Basically, we filed 2 trademarks
1) SE Super Epic
2) Super Epic Apparel

And what if for example:
American Clothing
http://www.americanclothing.com/

American Apparel
http://www.americanapparel.net/

They both sell "clothing" and is marked with either clothing or apparel, which is a descriptive term.


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## kimura-mma (Jul 26, 2008)

akumaevolution said:


> What if for example our line is called SE Super Epic vs theirs is just Super Epic? Because we register a trademark with the abbreviation in the beginning "SE Super Epic" instead of just Super Epic. And our logo does contain the word "SE" with the word "Super Epic" at the bottom of the logo.
> 
> Basically, we filed 2 trademarks
> 1) SE Super Epic
> 2) Super Epic Apparel


In my opinion, the letters "SE" do not differentiate the marks enough. I would say that both "SE Super Epic" and "Super Epic Apparel" both infringe on the "Super Epic" registered trademark.

The only way to know for sure is to consult an attorney or contact the examining attorney assigned to your USPTO application.



akumaevolution said:


> And what if for example:
> American Clothing
> American Clothing - AMERICAN CLOTHING
> 
> ...


Apples and oranges to your situation. Just because similar company names exist does not mean there are conflicting trademarks within the same classification of goods and services.

American Clothing seems to just be a retail store, not a manufacturer or brand. So if they wanted to register a trademark, it would be under Class 035 (retail clothing services). American Apparel, which does manufacture their own brand, is registered under Class 025 (clothing goods).

I understand your frustration. But you have yet to provide anything that proves your mark is actually different than the existing mark. Unless you can prove usage that pre-dates the existing mark, you probably have to pick a new name or add something to your current name.


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## GN (Aug 1, 2011)

kimura-mma said:


> ...Unless you can prove usage that pre-dates the existing mark, you probably have to pick a new name or add something to your current name.


 
..and do a TESS search before TM'ing it.


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## akumaevolution (Dec 14, 2011)

We received a letter from the attorney of the other party telling us to close down everything related to our current products since they trademarked the name. I guess we will have to rebrand our name in order to continue our shirt venture. It is the most heartbreaking thing to do but I guess we have no choice. We've been working so hard to build our name for the past 6 months and its now being restrained. Thank you for everyone's opinions.


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## Preston (Mar 21, 2006)

akumaevolution said:


> We received a letter from the attorney of the other party telling us to close down everything related to our current products since they trademarked the name. I guess we will have to rebrand our name in order to continue our shirt venture. It is the most heartbreaking thing to do but I guess we have no choice. We've been working so hard to build our name for the past 6 months and its now being restrained. Thank you for everyone's opinions.


Well until you get a ruling approving or denying your TM application, it may or may not be dead.

But even if yours gets approved it will come down to who can hire the most lawyers if they still do not want you to use Epic in your name.

You could just change it to Epics Apparel or Epical Apparel and tell them to rotate. Actually Epical means the same thing as Epic.

You may find this interesting.
Epic Swim


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## GN (Aug 1, 2011)

I don't think his was name actually "epic", just an example he used... I did a Facebook search for " epic clothing" and got about 6 different companies....


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