QUESTION

Can I legally use a trademarked name on t-shirts for sale in a different way than trademarked?

Asked on Mar 27th, 2013 on Patents - Massachusetts
More details to this question:
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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3 ANSWERS

Intellectual Property Attorney serving South Jordan, UT at Pearson Butler
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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.
Answered on Mar 31st, 2013 at 8:05 PM

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Appellate Litigation Attorney serving Boston, MA at Banner & Witcoff, Ltd.
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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.
Answered on Mar 27th, 2013 at 2:40 PM

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Licensing Attorney serving Portland, OR at Mark S. Hubert PC
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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.
Answered on Mar 27th, 2013 at 2:40 PM

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