Can I customize an already existing brand of shoe and sell the new design? 9 Answers as of November 01, 2013

I am interested in starting a business where I customize a specific name brand shoe and sell the resulting design. Is it legal for me to do so if I am not claiming the brand as my own? For example, customizing a converse shoe and selling it on a site like bigcartel. Thank you in advance for your help.

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Banner & Witcoff, Ltd. | Ernie Linek
Maybe. Several legal aspects clash in this case. First - once you purchase a shoe - you own it and can re-sell it - so long as you do not hold yourself out as affiliated with the original brand. Look at resellers such as Building 19 - they advertise "famous maker" goods for sale - just to avoid any confusion of this type. The one time they advertised using the actual brand name of Swarovski - they were sued. As for your plan to customize the shoe - the copyright laws prohibit anyone but the original owner from making "derivative works" - so this could be a problem unless you have permission from the original owner.
Answer Applies to: Massachusetts
Replied: 11/1/2013
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
Yes you can provide that you are buying the shoe from an authorized distributor ad the shoe you buy is not black market or counterfeit goods.
Answer Applies to: Oregon
Replied: 10/30/2013
Tran & Associates | Bao Tran
You certainly can as long as you keep sufficient space from the existing brand to avoid trademark and patent claims You should get patent application as soon as you can to prevent others from copying you. This is important as we move into the First to File era. I would recommend the use of software from PowerPatent.com called ProvisionalBuilder. Software costs $99 so it i very inexpensive yet guides you to prepare a high quality patent application that one year later you can turn to a lawyer to convert into a utility application for you. A feature summary is at http://www.powerpatent.com/prwelcome The software helps you organize information, and through your summary description, brings back sample patents in the same field for you to use as examples.
Answer Applies to: California
Replied: 10/30/2013
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
This would most likely be considered reverse passing off which is a form of trademark infringement. If your customization of the shoe is such as to transform it into an entirely different shoe, then it may be ok otherwise you could be liable. You also have the option of obtaining permission from the shoe manufacturer to customize it and reselling it under your own brand.
Answer Applies to: California
Replied: 10/30/2013
Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
In general when you purchase an item you can modify and resell the product. When you purchase the item you pay for all of the intellectual property related to that specific item. Removal of the logo and modification does not change your rights to the purchased product. Making changes to the product usually voids any warranty from the manufacturer. If you make the product then you can be in violation of multiple rights to the owner of the product and the trademark.
Answer Applies to: California
Replied: 10/30/2013
    Webb IP Law Group
    Webb IP Law Group | Jason P Webb
    If someone buys shoes from authorized distributors and make after-market modifications to those shoes and then sells those shoes to their customers under their own brand and does not do or say anything that would lead people to believe that they were doing this in association with the company that owns the brand of the shoes, that person would likely be ok under the doctrine of patent/trademark exhaustion, though their modifications and/or brand might still infringe someones intellectual property.
    Answer Applies to: Utah
    Replied: 10/30/2013
    Sebby Law Office
    Sebby Law Office | Jayne Sebby
    You can do so with permission from the corporation. You can sell modifications for a shoe without the company's permission; for example, a few years after Crocs became popular people started selling decorations to place in the various holes in the top of the shoe.
    Answer Applies to: Nebraska
    Replied: 10/30/2013
    Barton Barton & Plotkin
    Barton Barton & Plotkin | Maurice Ross
    This is illegal without permission from the manufacturer of the existing brand. You would be engaging in "reverse passing off" which is a form of trademark and trade dress infringement. Your "customization" could also violate copyright law in the vent the designs or logos on the shoes are protected by copyright law.
    Answer Applies to: New York
    Replied: 10/30/2013
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