Legal Question in Intellectual Property in New York

(Trademark question) Say I have an on-line retail store featuring t-shirts and the name of my business is called �FRUIT OF THE LOOM� (this is just an example). The name of �FRUIT OF THE LOOM� is incorporated as a business AND trademarked on my t-shirts (FRUIT OF THE LOOM�) AND Gift Cards are also trademarked (FRUIT OF THE LOOM� Gift Card).

If a company such as a bank or credit card company decided to use the name (FRUIT OF THE LOOM) on their Credit Card, for example �Capitol One FRUIT OF THE LOOM� Credit Card � would that be considered trademark infringement?

Asked on 11/03/15, 3:35 pm

1 Answer from Attorneys

Frank Natoli Natoli-Legal, LLC

The answer centers on market confusion. So for example, the market is not confused as between Delta Airlines and the Delta that makes the faucets. But some very famous marks can argue dilution, which can work in some cases. So for example, I don't care what you sell, if you call it the "McWhatever" you are going to hear from McDonald's lawyers. If you plan on operating within a certain class of good or service then you need to protect the mark in that class to be sure it is enforceable. The Examiners may or may not extend protection for related goods/services as that is a subjective analysis.

You can never get TM advice in a vacuum or in the hypothetical, so you really need to get specific and actionable advice on the mark before you make an investment and the first step is always a proper and comprehensive clearance.

Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.

Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox Business News on the importance of the due diligence process and our overview guide.;=-1

I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

If you would like to discuss further over a free phone consult, feel free to contact me anytime that is convenient. Our firm is now referred by the American Bar Association (see under the New York section):

Kind regards,



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DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.

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Answered on 11/03/15, 3:47 pm

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