Did we violate the trademark of the T-shirts by making them into backpacks? 8 Answers as of April 04, 2013

We have a ton of old concert T-shirts in our store. We have cut them up and sewn them into backpacks. Now they are selling pretty well. Are we in violation of trademark? We have them labeled as re-purposed memorabilia.

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Gerald Walsh | Gerald Walsh
If you do not own the trademark for use on backpacks you may be infringing the use of the trademark on backpacks. A trademark search would be helpful to know if the trademark is registered for goods such as backpacks.
Answer Applies to: Alabama
Replied: 4/4/2013
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
Generally, you should not have a problem. However if you put some scandalous material on say a Jantzen backpack, then the Jantzen company may have an action against you for garnishment of their mark. That is because the person buying the backpack sees the Jantzen trademark on the modified backpack and thinks that the Jantzen company is sell the backpack as it is. The consumer who comes into the store to by the backpack may confuse the source of the backpack.
Answer Applies to: Oregon
Replied: 4/4/2013
Barton Barton & Plotkin
Barton Barton & Plotkin | Maurice Ross
I would need more details, but my guess is that you are violating both copyright law and trademark law by using the T-shirts I this manner. You are creating derivative works without permission, which violates copyright law. Further, if the designs on the T Shirts constitute trademarks, your use probably also violates trademark law. Your labeling as "re-purposed memorabilia" does not get you off the hook. You face a significant risk that the copyright and trademark owners find out about this, you will be sued-and statutory damages for willful copyright infringement can be as high as $150,000 for each copyrighted work that is infringed. Only you can decide whether to take this risk. You also should know that copyright and trademark counterfeiting is a criminal offense, and it is at least plausible that you could be prosecuted for this. At the very least, you should retain intellectual property counsel (such as myself), to review the merchandise and assist you in developing a strategy to defend yourself in the event the worst happens.
Answer Applies to: New York
Replied: 4/4/2013
Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
As long as the T-shirts were paid for and the owner of the marks was compensated you should be fine. The only problem occurs when you print new shirts without the permission of the owner of the marks.
Answer Applies to: California
Replied: 4/4/2013
Banner & Witcoff, Ltd. | Ernie Linek
If the original shirts were "authorized" by the trademark owner - there is less likelihood of a problem, given that your label clarifies the nature of the product as "re-purposed memorabilia." Making that distinction should be enough - but the original trademark owner might disagree. Case law varies based on the specific facts of the matter. The key factor is to avoid any customer confusion as to the source, sponsorship, affiliation, etc. of the goods. Including on each backpack a "created by" tag with your company name on it could be helpful.
Answer Applies to: Massachusetts
Replied: 4/3/2013
    Ochoa and Associates
    Ochoa and Associates | Susan Ochoa Spiering
    Generally, use of a registered mark in an application that was not approved for is a violation of the trademark. More facts are needed here to know if you are in violation however. For example, did the performing entity give broad or limited authority to use their mark? or their likeness? Did you have authority only to sell t-shirts at the concert and no where else? or maybe at the concert and your store? How old are the t-shirts, and the entity on the shirts? It is best to speak to an attorney about this matter before it gets out of hand, or more costly for you.
    Answer Applies to: Texas
    Replied: 4/3/2013
    Sebby Law Office
    Sebby Law Office | Jayne Sebby
    Images on T-shirts are generally not trademarks but they may be copyrighted. However, as the owner of the shirts, you are free to do with them as you like, including cutting them up and using them on other items.
    Answer Applies to: Nebraska
    Replied: 4/3/2013
    Webb IP Law Group
    Webb IP Law Group | Jason P Webb
    Possibly. That one is tricky.
    Answer Applies to: Utah
    Replied: 4/3/2013
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