Can I legally use a trademarked name on t-shirts for sale in a different way than trademarked? 7 Answers as of March 31, 2013

I am an artist and my daughter wants me to design a t-shirt that she can sell at school with the name "dirty south" on it. I looked it up and there are two companies that have that trademarked, potato chips and a well known DJ. Can I still do this for her if the meaning and design are not copied but the phrase is?

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Webb IP Law Group
Webb IP Law Group | Jason P Webb
That sort of a thing is always specific to the particular circumstances. You should have an attorney review the details and talk with you about risk if you are concerned. Generally speaking, using a non-famous brand in conjunction with products not associated with that brand in a way that does not cause consumer confusion is not a problem.
Answer Applies to: Utah
Replied: 3/31/2013
Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
Yes as long as neither company is selling products in the class of clothing. As an example, a soda or beer company may also register their name for clothing in addition to the name being used for the beverage product. You can review the classes for the mark at the trademark office to determine if they have filed in other classes. Another example is the mark Infinity that is registered by multiple companies in classes.
Answer Applies to: California
Replied: 3/27/2013
Barton Barton & Plotkin
Barton Barton & Plotkin | Maurice Ross
This is not an easy question to answer. The issue is whether use of the trademark on the T-Shirts could create consumer confusion, or whether it might dilute the value of the trademarks. Without knowing many more facts and details I could not begin to advise you. However, this is a risky enterprise, and you should retain trademark counsel to advise you before investing significant money into this business. One of the jobs of trademark counsel is to advise people in situations like this, and help them take steps to minimize the likelihood of an expensive law suit.
Answer Applies to: New York
Replied: 3/27/2013
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
You are not using it as a trademark or a service mark. Also it would be logical to assume that you have looked at both of these trademarks and you won't be designing anything close in design or color to theirs. Also it would be safe to assume that it would not be scandalous so as to blemish their name. Also it would be safe to assume that your use would not be in any of the same fields as theirs. I would go ahead and design the shirt for them.
Answer Applies to: Oregon
Replied: 3/27/2013
Banner & Witcoff, Ltd. | Ernie Linek
Maybe, maybe not. Make your new t-shirt design and then have it reviewed by a trademark lawyer, and seek a clearance opinion before any sales take place. The trademark owner may still object to your use of the mark, and may even be able to convince a judge that your use should be stopped. T-shirts with trademarks on them are often sold by the owner of the mark, or by other authorized sellers.
Answer Applies to: Massachusetts
Replied: 3/27/2013
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