What do I do if someone is claiming to have trademarked the name of an item I am selling? 5 Answers as of June 15, 2011

I started a business online selling a product. The name of the item is also a description of the item use. I am being told that I can not use the word because it is a trademark, what can I do?

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DANIEL NESBITT
DANIEL NESBITT | Hasse & Nesbitt
I recommend that you consult immediately a trademark or intellectual property attorney. You can instead ignore the warning, but then you risk that the trademark owner may file an infringement lawsuit against you.
Answer Applies to: Ohio
Replied: 6/15/2011
Barton Barton & Plotkin
Barton Barton & Plotkin | Maurice Ross
You need to retain trademark counsel to analyze whether your use of this name violates trademark rights owned by another company. A trademark is a name or logo that identifies the source of goods or services. The primary issue in any trademark dispute is whether use of the trademark creates a likelihood of consumer confusion. Generally speaking, the first person to use a trademark in commerce owns the right to use the trademark, at least with respect to the goods and services that it provides. If someone else comes along later and begins using the trademark to sell competing goods and services, chances are this would create consumer confusion. Note that trademark rights arise from use in common-not from registration. However, registration of a trademark has many advantages, including establishing dates of use and various procedural advantages in trademark litigation.
Answer Applies to: New York
Replied: 6/9/2011
Devon & Associates
Devon & Associates | Marcia A. Devon
It sounds as if you may have a defense to a claim for trademark infringement based on "descriptiveness". Basically, one cannot obtain a trademark, or enforce a trademark, which prevents others from using words which are needed to describe a particular product. The law regarding the "descriptiveness defense" is complicated and fact-dependent, so I strongly recommend that you seek the advice of an experienced trademark attorney on how best to proceed.
Answer Applies to: California
Replied: 6/8/2011
Eclipse Group, LLP
Eclipse Group, LLP | Travis Burch
You can stop selling it. Or, you can check with the USPTO to see if their mark is trademarked. If it is, is there a likelihood of confusion between your product and theirs? Are they willing to accept a royalty under a licensing agreement (or are you willing to pay one)? Is the trademark vulnerable to being canceled? These are all things to consider, and of course, litigation costs money and time.
Answer Applies to: California
Replied: 6/8/2011
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
It is impossible to trademark merely descriptive words or if someone has been using the mark for the same item.
Answer Applies to: Oregon
Replied: 6/8/2011
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