Generic subject trademarked?

[melllbelll]

I own an online costume store and in my logo is an image of a grim reaper. Today I received an email from a competitor that claims to have trademarked grim reapers and that "the use of a grim reaper in connection to a Halloween store" is infringing on his trademark. The grim reaper in my logo looks nothing like his, and the names of our companies are completely different. I am a fairly new business owner and looking for some assurance that I'm in the right. My understanding is that you can trademark a specific logo design and of course no one can blatantly copy it, but surely you can't trademark all designs of a particular subject that relates to the type of business. By that rationale I could trademark all images of dogs and cats in connection with a pet store and sue any pet store with a dog or cat in its logo...

Any advice is much appreciated... thanks!

[JSonnabend]

It is possible to have trademark rights in a particular depiction of the grim reaper, even for costume/Halloween related services.  That doesn't mean that trademark rights in such an image, even if registered, prohibit uses of all depictions of the grim reaper by competitors.  To the contrary, only confusingly similar uses would be prohibited.

The analysis of likelihood of confusion is highly fact specific, and I urge you NOT to post details here.  If you are concerned, you should speak directly to a qualified TM attorney.

- Jeff

[DogDayPM 9er9er9er]

It is possible to have trademark rights in a particular depiction of the grim reaper, even for costume/Halloween related services.  That doesn't mean that trademark rights in such an image, even if registered, prohibit uses of all depictions of the grim reaper by competitors.  To the contrary, only confusingly similar uses would be prohibited.

Jeff,

Let's say arguendo the situation is the letter sender has a registration where the Description of Mark is recited in excruciating detail with respect to the logo and store name (the colors used, the posture and positioning of the reaper, existence of and positioning of ancillary items in the logo).

How does the verbal Description play into likelihood of confusion?  (Or does it at all?)

Along a different tack, if the letter sender's mark is so different from another's use that you can presume no good faith basis exists, are there any sort of penalties that may be assessed for what is essentially trying to use federal law as a bullying stick? 

[JSonnabend]

I've never seen the description of mark argued, but I suppose it's possible.  I believe it's more about searching, but I could be wrong.

There isn't necessarily a cause of action for writing a strong letter directly to a purported infringer, although I suppose one could possibly formulate a tortuous interference type c of a.  To stop the bullier, there's always DJ actions.

- Jeff

[DogDayPM 9er9er9er]

I've never seen the description of mark argued, but I suppose it's possible.  I believe it's more about searching, but I could be wrong.

There isn't necessarily a cause of action for writing a strong letter directly to a purported infringer, although I suppose one could possibly formulate a tortious interference type c of a.  To stop the bullier, there's always DJ actions.

- Jeff

Thanks Jeff.  On the DJ - are these similar to DJ's in patents where you can argue non-infringement and/or invalidity, or can you only seek judgment on the non-infringement issue?

[JSonnabend]

DJ actions aren't peculiar to any form of intellectual property.  They can be brought for any federal action where the prerequisites of the Declaratory Judgment Act (28 U.S.C. §2201) are met.

- Jeff

Sorry, misread your question.  Yes, you can argue anything that establishes the parties' respective rights.