Legal Question in Business Law in New York

Re: Name infringement

You could be infringing on the mark, regardless of whether it constitutes only part of your product's name. However, you have not supplied all of the relevant information for one to give you a legal determination. Generally, the fact that one is using someone else's trademark on its goods is not a per se violation because it depends on when each party first used the mark in question, the geographic scope of the use of the mark, whether the accuser has federally registered such mark and for what class of goods the mark is protected.

Feel free to contact me if you would like to discuss the matter. This answer is for informational purposes only and does not constitute legal advice.

Re: Name infringement

It's a little odd that the infringement notice was sent to you by email rather than by registered mail and signed by the complaining company's legal counsel. Be it as it may, you can look up who owns federally registered trademarks using the words "slim" and "wrap" by going to the website of the USPTO -- www.uspto.gov.

If the sender of the email (company name or individual) matches the name of the trademark owner appearing in the trademark register, you should take it seriously and consider legal representation before responding to the email.

As the previous reply states, depending on the priority of use of the conflicting marks, their respective strengths, overlap in the markets the competing firms serve, and several other factors, you may have certain defenses to an infringement action, if one is pursued by the complaining mark owner. It is generally a good idea to try to negotiate a settlement but sometimes litigation is inevitable.

The above reply is informational in nature, is not legal advice and should not be relied upon as such.

Re: Name infringement

I concur with the other authors. However, you might also want to consider contacting a patent attorney, who can run a search (may cost a few hundred dollars) and better advise you. I recall that trademarks may be limited to certain categories of merchandise, so that if the claimed infringement only pertains to food and related products, for example, and your use is for some other category (let's say, if they have this in the trademark regulations, medical related products) that they did not claim, you may be able to use it for another category of product. Again, I recommend checking all of this with a patent and trademark specialist.

Re: Name infringement

It is possible that your use of the 'Body Sculpting Slim Wrap' trade name infringes on the sender's alleged mark. Based on their citation of federal law, they are implying that they have federally registered their mark. My suggestion is that you visit the USPTO website (www.uspto.gov) and browse their registration database to confirm whether their mark is indeed registered. However, cease and desist notices are typically made through registered mail and expressly state the allegedly infringed mark's registration serial number. If these things are missing, you should ask for further information from them. Also, mere registration does not mean they have a monopoly over that mark. Rather, you have to see if their registration is in the same class of goods or services yours is and whether their product bears resemblance to yours, among other factors. In addition, absent a federal registration on their part, their specific geographic presence is a critical issue.

Best,

Kaiser Wahab

www.wrlawfirm.com

www.bizmedialaw.com