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[boozerker]

Say you own both an online and brick & mortar electronics store, and to distinguish the quality in your careful selection of used goods to include within either shop, you use a trademark to distinguish your stuff from other used products (with either a sticker affixed directly on it or onto the shipping wrap).

Is that feasible? Ok then, next question.

Would you gain trademark protection over any similar new products in the market? For example, your trademark is "The most juiciest sounds ever" placed on used radios (which bear a separate and original trademark you don't own, such as Panasonic). Then if another company were to produce brand new radios and stamp each one with the phrase "The most juiciest sounds ever", can you dispute its use and claim trademark over the phrase?

[JSonnabend]

If the two uses were likely to cause confusion among consumers, then the marks would conflict and the senior user should be able to stop the junior user's use.

Keep in mind that your use of the mark "on the goods" does not mean that the mark would be for the goods.  It's an interesting fact pattern that might bear some research to determine the best ID for the mark.

- Jeff

[boozerker]

Keep in mind that your use of the mark "on the goods" does not mean that the mark would be for the goods.  It's an interesting fact pattern that might bear some research to determine the best ID for the mark.

Can you elaborate on what that means please? I'm didn't grasp everything you said there.

[JSonnabend]

Well, at first blush at least, you don't appear to be the "source" of the goods (i.e., you are not manufacturing the radios).  You are more of a retailer.  So the ID for your mark is that of retail services (more or less), not for the goods themselves, I believe.

- Jeff

[boozerker]

1. That's basically what I'm asking: can I trademark something for retail services or any product I don't own (even with a certification mark), and then prevent the mark from being used on that class of goods?

2. Also, from your other post I'm not clear on the meaning of "fact pattern".

[Kaitlin]

"Fact pattern" is just law lingo for the particular kind of factual situation you describe. 

When the facts in a particular situation are out of the norm, it's hard to give a quick off the cuff assessment of how the law might play out for someone in that situation.  Unless an attorney just handled a similar case, s/he'll usually have to hit the books to see if any courts have dealt with similar situations, which can be a lot of work and is beyond the scope of our general discussions here. 

That being said, and without advising or offering a legal opinion here, it seems to me there's no reason why a retailer of used goods couldn't have a trademark which indicated his/her business as the (secondary) source of the used products.  A business that inspects and tests used goods for a certain level of quality should be able to have a mark that sets their used goods apart from other used goods.  If another business began to use a similar mark in a way which was likely to lead to consumer confusion, I should think there would be a basis to claim infringement. 

Now, whether or not the original manufacturers would have any grounds to complain about a sticker indicating the used-market seller being affixed along side their own marks, that's another matter.

[Kaitlin]

1. That's basically what I'm asking: can I trademark something for retail services or any product I don't own (even with a certification mark), and then prevent the mark from being used on that class of goods?

Don't let yourself be lulled into a false sense of security thinking that registering a mark gives you absolute rights that you can use against any similar mark on goods in that same class. 

Trademark rights exist by virtue of their use and function as source identifiers, to help consumers distinguish among various sellers.  When you federally register a mark, you enhance those rights, but the rights are created by using the mark.  And the bottom line for infringement still comes down to whether someone else's use of a similar mark is likely to cause consumers to be confused about the source of the goods.