need help with trademark!?

Question

i have a question my business partner and I started a business selling t-shirts, we made a shirt thats say " i stay sucka free" ( heres a link to the design we have for our T-shirts )
http://pic70.picturetrail.com/VOL1870/8518950/15831699/241282803.jpg

My partner and I registered with the City of San Francisco for a business license, have our EIN FBN ect.. Are company is named I STAY SUCKA FREE CLOTHING.

Apparently unawarely there is a clothing company named Sucka Free Clothing. We were contacted by the owners attorney, and she informed us that her client owns the trade mark right to sucka free and sucka free clothing.The attorney had our pay-pal account blocked and told us to remove everything off our myspace page referring to i stay suckafree clothing.. and to give her a copy of all are inventory so she can assess the matter, but we decided not to give it to her.

We, then talked to the attorney again and informed her that we understood that her client owns the trade mark to sucka free and sucka free clothing, and that we were more than willing to drop the i stay sucka free clothing we agreed that it would cause confusion. So now we are in the process of getting a new name... But that we both didn't agree to stop selling our shirts because are shirt are a artistic statement that says " i stay sucka free" . We also decided we were going to add to the design "its a way of life", which differs by theirs "sucka free". Not to mention that the
designs are totally different.

heres a link to there info there is a specimen of there design on there as well
 
http://portal.uspto.gov/external/portal/tow?SRCH=Y&isSubmitted=true&details=&SELECT=US+Serial+No&TEXT=75518077#

we really would like to know if we have the right to sell our shirts we feel that the designs and the concept are totaly different

thank you

Answer 1

I'm going to give you the answer you want to hear.

Everyone above is correct. Your case is weak. However, you are not completely dead in the water.

You might have a point about articles having a certain artistic statement. Your opponent's mark is only a Word Mark without the "I stay" or any artistic design (I looked this up in a private database) so there is some difference. However, you're going to need a real good trademark attorney to win on that argument and that means your products need to have a pretty fair market value to justify that kind of expense.

There have been two other applicants for "Suckafree" since 2002. One, ironically, claimed to have been using it since 1994. However, both abandoned their applications. Your opponent is used to fighting these battles so you have an uphill struggle...but not impossible.

Answer 2

For trademark purposes, SUCKAFREE is the same as SUCKA FREE is the same as SUCKERFREE is the same as SUCKER FREE in almost all circumstances. The applications for SUCKA FREE mentioned above are dead, but the registrations and applications for SUCKAFREE are alive and well. If you proceed, D & D can come after you, and they probably will.

Here is a good illustration of the issues often encountered in applying for a federal trademark registration. An application for SUCKA FREE (http://portal.uspto.gov/external/portal/tow?SRCH=Y&isSubmitted=true&details=&SELECT=US+Serial+No&TEXT=76518540) was rejected by the Patent and Trademark Office because "the applicant's mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2383902 as to be likely to cause confusion, or to cause mistake, or to deceive." In this case, since the Applicant did not respond to the Likelihood of Confusion rejection, the application went abandoned.

Also, the SUCKAFREE mark has become incontestable. Section 8 and 15 Affidavits have been filed and accepted. See http://portal.uspto.gov/external/portal/tow?SRCH=Y&isSubmitted=true&details=&SELECT=US+Serial+No&TEXT=75518077#.

Having a business license is not going to help you defend against a trademark infringement lawsuit. As previously stated, if you can establish that the mark is generic, you may be able to win the case, but you are going to spend many thousands of dollars to get there.

If you are interested in reading further, there are some excellent sources of trademark information at http://www.nolo.com.

Answer 3

Hai, i dont know exactly the law or articles that ruling these kind of things. But it concerns with patent and sort of things. Based on my experience working in retail industry, even a letter in a similar name make a difference, and has a right to market the products, a trademark etc. So, you have the whole right to market your product, anyway, the name is different. But another problem might unconvinience for both is when the customers or media making the rewviews. So, while ( i dont know if you agree or not) finishing the serial of i stay sucka free, maght you figured out something similar in concept, but in different expression. The other concept is ok to go. If i werre you, i dont want people compared my ; i stay sucka free' with sucka free. Because its only one nike or adidas and not a cool to have 'my nike' or 'my adidas'. In my countries its happen, but it just not cool for the customer.

Answer 4

If I were your attorney, i would say that your shirts violate the other person's trademark, and that you should stop selling them -- either the old version or the modified version.

The exception is if you can prove that the phrase "stay sucka free" is in such common usage in your community that it has no product identity and is therefore a generic phrase.

But you would have to be able to prove that on the wide scale -- not just claim it without external objective proof.

On the other hand, doing a search on the USPTO indicates that both of the "Sucka Free" trademark registratrations have a DEAD status (abandoned 2004). So, that changes the equation if your attorney wants to pursue the matter.

http://tess2.uspto.gov/bin/showfield?f=toc&state=ievfo2.1.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=&p_tagrepl%7E%3A=PARA1%24LD&expr=PARA1+AND+PARA2&p_s_PARA2=sucka+free&p_tagrepl%7E%3A=PARA2%24COMB&p_op_ALL=AND&a_default=search&a_search=Submit+Query&a_search=Submit+Query

Answer 5

Bret Michaels of Poison - consistently comes on degree in a lengthy white fur coat Ian Astbury of The Cult - consistently dances with the microphone. won't use a cordless one. consistently has to have the only with the stand. The Scorpions - each and all of the guitarists gets in a row and pass their guitars up and down in synch with one yet another. Sounds lame yet looks large once you spot them stay! Paul Stanley of Kiss - bare chested in some unspecified time interior the destiny. the two situations I truly have considered them, he used some style of chain factor to hold himself midway out into the objective marketplace to stand on something so he must be nearer to the folk interior the midsection. AC/DC - of direction, Angus' schoolboy outfit. yet he has additionally been person-friendly to moon the objective marketplace. and then Brian Johnson carried him out on his shoulders up and down the aisles in front and on the facets of the objective marketplace Ted Nugent - taking photographs a objective with a flaming arrow on degree. i think of he additionally has an American Flag as his historic past.