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  1. #11
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    Jul 2018
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    Default Re: Trying to Understand What is Trademarkable

    Quote Quoting Katydog
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    Okay, this is what I'm having a hard time understanding.

    When I asked: if NIKE had one shoe called Cool Colleen Trainer. Is that name trademarkable?

    You said: "No (for the reason explained above), but that name could be a trademark and could be registered as such."

    This is exactly what I'm having a hard time understanding. You say "no (for the reason explained above)". What reason? Is it because it doesn't indicate the source?
    The "no" response is because "trademarkable" isn't a word. As noted, however, the name you mentioned "could be a trademark and could be registered as such," which is probably what you meant when you wrote "trademarkable."

    Quote Quoting Katydog
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    My attorney has explained to me that "Cool Colleen Trainers" is not a trademark (or it's not being used as a trademark by NIKE).
    I have a registered trademark "Cool Colleen Trainers" and use it for something similar as NIKE, but it's not one shoe; it's a shoe, socks, and an exercise manual. My URL is "coolclolleentrainers.com", and my website has the name prominently at the top. My attorney said that I am using "Cool Colleen Trainers" as a trademark. So I don't have to worry about infringing on NIKE (note that they did use the name first).
    I assume that "Cool Colleen Trainers" is something you made up for the purpose of this discussion. Without knowing the actual term, it's a little difficult to comment, but you absolutely should not post the real term here. But let's use a real term. Nike sells a line of shoes called "Air Jordans." That term absolutely is a trademark and is being used as such, and anyone else who slapped that term on a product would get a cease and desist letter PDQ. With that being said, assuming your lawyer has expertise in trademark law, I suggest you rely on what he tells you over anything an anonymous stranger on the internet tells you.

  2. #12
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    Oct 2016
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    Default Re: Trying to Understand What is Trademarkable

    Quote Quoting Katydog
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    I don't know enough to ask the right question. I'm basically feeling my way around to try and formulate the question.

    I'll try and explain why I'm asking without directly relating it to my case, so I will continue to use my similar NIKE situation.
    My attorney has explained to me that "Cool Colleen Trainers" is not a trademark (or it's not being used as a trademark by NIKE).
    I have a registered trademark "Cool Colleen Trainers" and use it for something similar as NIKE, but it's not one shoe; it's a shoe, socks, and an exercise manual. My URL is "coolclolleentrainers.com", and my website has the name prominently at the top. My attorney said that I am using "Cool Colleen Trainers" as a trademark. So I don't have to worry about infringing on NIKE (note that they did use the name first).
    It isn't that you don't know enough to ask the question correctly. You don't seem to be able to write the question at all.

    Is "Cool Colleen Trainers" the actual name of your product? If it is NOT and you don't want to post the name of your product write something like XXX trainers. You might also explain why you think after your attoreny said otherwise that XXX trainers which is a shoe, socks, and an exercise manual in any way on the NIKE trademark. They really don't sound or look anything alike.

  3. #13
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    Mar 2019
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    16

    Default Re: Trying to Understand What is Trademarkable

    *sigh*

    I do have complete faith in my attorney, but me being me really wants to understand this, and I just can't seem to get it. I did inquire, and he explained it, but I didn't get it. Sometimes I need things explained from another source and that's why I posted here. I did comb the internet and tried to figure it out but I can't.

  4. #14
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    Default Re: Trying to Understand What is Trademarkable

    Clearly you need things explained to you and I have no problem with that. But read my post. If you want things explained you have to ask the proper question.

    There are several suggestions on how to do that in my last post.

  5. #15
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    Mar 2019
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    Default Re: Trying to Understand What is Trademarkable

    Quote Quoting PayrolGuy
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    It isn't that you don't know enough to ask the question correctly. You don't seem to be able to write the question at all.

    Is "Cool Colleen Trainers" the actual name of your product? If it is NOT and you don't want to post the name of your product write something like XXX trainers. You might also explain why you think after your attoreny said otherwise that XXX trainers which is a shoe, socks, and an exercise manual in any way on the NIKE trademark. They really don't sound or look anything alike.
    I realize I'm not clear, and I apologize (I'm very confused). I'm not asking if XXX trainers is the same TM as the NIKE trademark. I'm asking this: if NIKE had a single product with a name (XXX trainers) and someone created a product brand (for example - shoes, socks, and an exercise manual) with the same name (XXX trainers) and registered a trademark with that name, is that infringement (even though NIKE did not register a TM for XXX trainers)? I would say yes (under Common Law), but I'm told no.

  6. #16
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    Oct 2016
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    Default Re: Trying to Understand What is Trademarkable

    Thank you for actually asking a question almost.

    If they have been using it in commerce it could be. Registration of a trademark isn't required it just makes the bar they have to reach somewhat higher when they sue you. But considering that the bar is going to be pretty low because your product would also be foot related.

    https://www.law.cornell.edu/uscode/text/15/1125

    Trademark law is out there for two main reasons. To avoid customer confusion and to slap down those that would try to profit from another company's work. You seem to be trying to do both. But all of this assumes that NIKE used XXX first. If they didn't and you did you get to slap them down.

    But if your lawyer said you were fine there is a very good chance that he knows something about the issue you have not communicated to us.

  7. #17
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    Mar 2019
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    Default Re: Trying to Understand What is Trademarkable

    To be clear, I never heard of the other company or their product until after mine was in commerce for several years.

  8. #18
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    Default Re: Trying to Understand What is Trademarkable

    Quote Quoting Katydog
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    I do have complete faith in my attorney, but me being me really wants to understand this, and I just can't seem to get it. I did inquire, and he explained it, but I didn't get it. Sometimes I need things explained from another source and that's why I posted here. I did comb the internet and tried to figure it out but I can't.
    At this point, I can't figure out what your question is that hasn't been answered. Can you elaborate?

    Quote Quoting PayrolGuy
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    You might also explain why you think after your attoreny said otherwise that XXX trainers which is a shoe, socks, and an exercise manual in any way on the NIKE trademark.
    Ironically, it seems like there's a word missing from this sentence.

    Quote Quoting Katydog
    View Post
    I'm asking this: if NIKE had a single product with a name (XXX trainers) and someone created a product brand (for example - shoes, socks, and an exercise manual) with the same name (XXX trainers) and registered a trademark with that name, is that infringement (even though NIKE did not register a TM for XXX trainers)? I would say yes (under Common Law), but I'm told no.
    Unfortunately, trademark infringement analysis is incredibly difficult to do in the abstract, but here are my thoughts about this.

    As far as I know, most or all of Nike's trademarks relate to shoes and clothing (although since it now sounds like we're only talking about Nike for the sake of discussion and that your dispute is with some other company). That being the case, if Nike has a trademark for "XYZ" and you subsequently create a footwear clothing product that uses "XYZ" as the name, it will almost certainly be infringing of the Nike mark. If you're being told otherwise by an attorney who understands trademark law, then I have to conclude that he has relevant information that you haven't conveyed as part of this question.

  9. #19
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    Mar 2019
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    Default Re: Trying to Understand What is Trademarkable

    My attorney looked at their product, and said it wasn't indicating it's source, it was not being used as a trademark. All the other company's advertising and all their reviews did not name the item with the TM, it named the item that included the TM (but not the item itself). My attorney said that I have a registered TM and my use of the name is in line the way a TM is supposed to be used (identifying the source). In addition, the other company did not monitor the name and never contacted me (until 7 years later after my item was in the public domain).

    I apologize if my NIKE example was different.

  10. #20
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    Oct 2016
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    Default Re: Trying to Understand What is Trademarkable

    Quote Quoting Katydog
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    To be clear, I never heard of the other company or their product until after mine was in commerce for several years.
    Just because you never heard of it means nothing.


    Quote Quoting Katydog
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    My attorney looked at their product, and said it wasn't indicating it's source, it was not being used as a trademark. All the other company's advertising and all their reviews did not name the item with the TM, it named the item that included the TM (but not the item itself). My attorney said that I have a registered TM and my use of the name is in line the way a TM is supposed to be used (identifying the source). In addition, the other company did not monitor the name and never contacted me (until 7 years later after my item was in the public domain).

    I apologize if my NIKE example was different.
    Then listen to your lawyer. He has more info that we do. Did he suggest taking action against the other company?

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