Your Business Can Get In Trouble For Accidental Infringement
Have you ever noticed that when you refer to many products, you call them by their brand names? For example, a tissue is a “Kleenex,” or jewelry is in a “Tiffany’s” setting or a shirt is a “Polo shirt?” Using those terms may be OK for you to do in everyday life, but using them in your business dealings can get you into a lot of trouble.
Businesses need to be aware of what words are trademarked, and thus, not permissible for the business to use when selling, promoting, describing or advertising a product.
Saying that a medicine is a “Tylenol” doesn’t mean that you are intentionally trying to pass a product off as a Tylenol product when it isn’t. But you can still get in trouble for using that name, because you are piggybacking on another company’s brand—their Tylenol name, prestige and name recognition—to sell your product.
Costco Gets Sued
Retailer Costco got in trouble for doing just this exact thing, when it labeled jewelry it was selling as being a “Tiffany’s” setting. Costco says it had no intention of making anyone believe that jeweler Tiffany’s had anything to do with the jewelry (and they didn’t). Costco even pointed out that Tiffany’s full name was “Tiffany’s & Co.,” a name that Costco did not use or label on its jewelry.
But Tiffany’s sued and won. Costco’s argument that “Tiffany’s” had taken on a generic meaning to the general public, and thus was no longer specifically associated with one company or brand, was unpersuasive.
Although unpersuasive, there is some authority in the law where an otherwise trademarked name can lose trademark protection when it becomes too common, and the public starts to associate the name with the product, and not the particular company. Imagine, for example, the word “Band-Aid,” a trademarked name, but a word that now is associated with any type of bandage sold by a multitude of different companies.
The same applies to words like Aspirin, Dry Ice or an App. A trademark owner has to take measures to protect its trademark from being sued so often and in so many places, that it becomes generic, and loses trademark protection.
This is why enforcement actions aren’t just about making money, but about making sure a business protects its intellectual property rights from being lost forever.
Sellers are Responsible
Remember that if you sell products, you are ultimately responsible for infringement, even if you didn’t make, manufacture or produce the product.
For example, if you operated a website that sold products that were labeled as “iphones,” but were not actually Apple products, you could be liable for infringement, even if you were just the “middleman,” maintaining a vehicle—a website—that sold the phones.
Call the West Palm Beach business litigation lawyers at Pike & Lustig for help today to protect your business, protect your intellectual property and keep you and your company out of legal trouble.