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I'd like to manufacture a product, but I'm curious about my naming options.

Here's my scenario in a nutshell:

In 1960, a company patents a wallet design and sells them as Zark wallets.

In 2006--after the patent expires--another company trademarks the term "Zark" and begins manufacturing the same wallet design.

In 2013, the trademark for "The Zark" is cancelled because the second company failed to renew their registration--even though they still manufacture and sell the product.

Here are my question:

If I manufacture wallets with the same design and call them Zark wallets, am I infringing on the rights of the first company, the second company, both, or neither?

  • You already have a question that's basically the same. – pboss3010 Jan 25 at 14:32
  • Thanks for noting this. I deleted that question last night before I went to bed, but--you're correct--that it appears to remain live on the site. This question is slightly different. But, I'll monitor the other as well. – Zack Jan 25 at 15:34
  • What country is this taking place in? Some countries, such as the US, protect trademarks that are in use but not registered. Others give no protection without registration. Also, whether one can register a mark that another is currently using but has no current registration for may vary by country. – David Siegel Jan 25 at 16:28
  • I'm in the United States. – Zack Jan 25 at 17:17
  • @zack Thanks. It is often helpful to mention the jurisdiction, or indicate it with a tag, or both, when posting a question here. I added a tag to this one. – David Siegel Jan 25 at 23:43
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Trademarks in the US exist and are defensible without being registered. If you use the trademark in a way that will cause confusion between your product and theirs (which for identical products is inevitable) you are infringing the second company’s trademark.

Because the patent has expired you can make the wallets and call them something else. Or you can make computer games, or a breed of rose, or an accounting firm and call it ‘Zark’ because they can’t be confused with wallets; you probably can’t make watches, or purses, or other fashion accessories as they can be confused.

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To Clarify @Dale M's correct answer on an issue the question asked about, selling such wallets under the "Zark" name (without permission) would infringe the rights of the company currently selling such wallets. If the company were not actually selling such goods (and had not been for a while) and had no registered trademark, there would be no rights to protect.

Note that in a country that did not protect unregistered trademarks, the answer would be different.

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