Legal Question in Business Law in California

Trademaark Troubles

I would like to name a product ''Java Toppers''. When I did some research I discovered that a small company has trademarked that name. In researching the name ''Coffee Toppers'', I discovered that someone had trademarked ''Coffee Toppers'' and someone else had trademarked ''Old Fashioned Coffee Toppers'' (both are live).

My question is this: Since the name Java Toppers is so descriptive (both words are real), can I use it for my product name/discription as is (without a trademark)?

As a second option, can I trademark ''Sammy's Java Topper's'' and put that on my label?

Thank you so much for your help!


Asked on 10/08/01, 3:32 pm

3 Answers from Attorneys
Bryan Whipple Bryan R. R. Whipple, Attorney at Law

Re: Trademaark Troubles

In my opinion, the answers are 'no' and 'probably not.' Using either invites a lawsuit. I suggest you contact the owner of the registered trademark to see whether it is in active use and whether you can acquire the right to use it.

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Answered on 11/21/01, 4:15 pm
Sheldon G. Bardach Law Offices of Sheldon G. Bardach

Re: Trademaark Troubles

You believe that a trademarked name, even if descritive, is better than one that is not. The only way to test whether the name is adequately descriptive so as to deprive it of trademark status is to use it and defend an action for trademark violation. It does appear to be too descriptive, but who can definitively say? Use, therefore, is not a great idea. Prudence would recommend either using another name, or contacting the trademark owner to discuss a license. It may be cheaper than you think.

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Answered on 11/21/01, 5:10 pm
Ken Koenen Koenen & Tokunaga, P.C.

Re: Trademaark Troubles

The biggest test will be what the other party makes. If they make lids for coffee cups, and you make whipped cream, there isn't a major chance of confusion. The other party might just own the name, and not even have a product. You could negotiate to use the name, perhaps on a per unit basis (5 cents per sale).

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Answered on 11/21/01, 6:45 pm


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