Do I have to pay someone to sell a trademarked product? 4 Answers as of November 23, 2010

If I sell something that has a trademark, is it illegal or would I just pay a percent to the person with the trademark? If the trademark says Non-Final Action-Mailed, what does this mean?

Ask a Local Attorney. 100% Anonymous. Free Answers.

Free Case Evaluation by a Local Lawyer: Click here
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
If you put anothers trademark on your product and sell it expect to get sued shortly.
Answer Applies to: Oregon
Replied: 11/23/2010
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
non-final action from the USPTO indicates that the trademark application is not allowable as is but may be further prosecuted to allowance. If you need additional information you may visit our website or contact us for a free initial consultation.
Answer Applies to: California
Replied: 11/22/2010
Malhotra Law Firm, PLLC
Malhotra Law Firm, PLLC | Deepak Malhotra
It depends.

Is the source of the product the trademark owner? If so, you should be able to resell it.

Are you saying you want to sell a product and use someone elses trademark on it? That is a bad idea. You can be sued for that.

To determine whether you infringe or not, a court would consider factors such as the following:

(1) strength of the plaintiff's mark;

(2) similarity of the marks;

(3) proximity of the products in the marketplace;

(4) likelihood that the plaintiff will bridge the gap between the products (enter a market related to that in which the defendant sells its product);

(5) evidence of actual confusion;

(6) the defendant's bad faith;

(7) quality of the defendant's product; and

(8) sophistication of the relevant consumer group.

If someone has received a non-final office action while trying to federally register a trademark, it just means that an application has been filed and is in process. It is still possible that the mark will eventually be registered federally. Keep in mind that state common law rights can arise just from using a trademark on a product, without a federal registration or any registration.

There are a lot more questions that need to be answered before an answer can be given. One is whether the mark is famous. Another is whether the goods are similar or completely different.
Answer Applies to: Washington
Replied: 11/22/2010
Rhema Law Group
Rhema Law Group | John D. Tran
Yes, typically you will have to obtain a license or a permission from the trademark owner in order to sell a product bearing the trademarked name. If you use the trademark without permission, you risk infringing the rights of the trademark owner which may subject you to liability for trademark infringement and damages.

"Non-final action mailed" means that most likely that the trademark in question is not registered yet but is still in the process.
Answer Applies to: California
Replied: 11/22/2010
Click to View More Answers: