Badvice: Don’t Walk Into This Trap!

I like Reddit. I’m probably more of a lurker than a faithful contributor, but I do like to answer legal questions or comment from time to time. I did a search of “trademark” in /r/smallbusiness to see what people have already said about it and I found some interesting things. Some good advice and some bad.

One comment stood out as particularly bad to me. In my view as an attorney, it’s badvice.

The Question

Here’s the question from TMquestiongrannie:

A family member and I make make colorful crystals. We live in an artist driven area (an art school neighborhood) where a lot of people trade and sell art to each other. Lately I have been putting flowers in the crystals, which been really popular. A lot of the other artists here sell or market their products through instagram, so I thought about doing the same. I searched, though, and there is already a store selling crystals with flowers , and they have registered “flowercrystals” as a trademark. They are almost the only one who uses the hashtag #flowercrystals. The account only active since November 2016 and the trademark only a month old.

The trademark website says: “Word Mark FLOWERCRYSTALS Goods and Services IC 031. US 001 046. G & S: Dried flowers in resin crystals”

But I found another store on instagram who has made these and another store who has also made a couple and even tagged it as #flowercrystals.

Does the trademark mean I can’t make crystals with flowers anymore? Of if I keep making them, can I not put them on instagram to sell? Is the hashtag and phrase “flower crystals” only allowed to be used by the original store?

I wasn’t too sure on what flower crystal are, so I looked it up on instagram (@flowercrystals). Here’s what I found:
Flower Crystals

It’s actually pretty cool. People think of some really creative things–like the advice that’s about to follow…

The Bad Advice

So basically nmgoh2 is saying to use the trademark better than the trademark owner and then throw a bunch of cash at the owner to buy the trademark. Is it possible that this scenario can work? I suppose it is possible. But it’s not putting TMquestiongrannie in a position of strength.

If TMquestiongrannie uses the flowercrystal trademark to sell her products, it is going to technically be an infringement of the trademark based on the fact that flowercrystals is a registered trademark. Under the Lanham Act, the trademark owner would be entitled to TMgrannie’s profits, plus possibly triple that amount and attorney’s fees and costs. Thus, if I were the trademark owner, I would say, “Sure, you can buy me out, but first pay all my damages and then we can talk.”

The point is if you want to compete against someone who has a registered trademark by using that trademark, it’s putting yourself in a bad position.

What Should TMgrannie do?

In my view, Flowercrystals is not a strong trademark because it basically describes the actual product. The actual product is a flower inside of a crystal–a flower crystal. If the trademark owner had asked me about registering this mark, I would have said it would be unlikely to pass the USPTO review. I wouldn’t have said “don’t apply for the registration” but rather,”Don’t be surprised if it gets denied.” It didn’t get denied, so it was a good move by the owner. Nevertheless, my overall opinion is that this trademark could be canceled if someone were to contest it.

And that’s what I would suggest to TMgrannie. I would say that if you want to use the words “Flower Crystal” to sell your product, you should contest the trademark. Sure, this would cost an lot of money, but it would put you in a better position of strength (because the other party will have to also pay to defend against the challenge) and it avoids the potential future dispute, which could be even more costly. If you don’t want to challenge the trademark and if you don’t want to risk the infringement penalties, then my suggestion would be that you do not use “Flower Crystals” in your marketing. Instead, get creative and think of something else to call it.

One more lesson

The next thing this situation teaches us is that you want to be the first to file for your trademark. The person who obtained the flowercrystals trademark was smart to do so. Registering first puts you in a good position. In my view, the only reason not to register for a trademark is if you literally do not have the money to do it. And if that’s the case, that fine. It is what it is. But you should come up with the funds as soon as possible and get the trademark application on file. It’s just a good idea!

Let’s Get in Touch

If you have questions about trademarks or would like a flat quote on the total cost (including filing fees, search fees, and attorney’s fees), let’s get in touch. Shoot me a text (702-291-1799) or schedule a meeting.

Schedule a FREE Consultation

Leland Faux
Attorney Leland Faux blogs about trademark, copyright, and online business issues at Law of the Brand. You can submit a question by email to thelawofthebrand@gmail.com.

Trackbacks & Pings

  • 3 Steps to Claiming a Trademark for Your Niche Site or Products - Niche Pursuits :

    […] First, there is apparently a niche market for flowers encased in crystalline resin. A gal was marketing these as “Flower Crystals.” Well, she ended up with a cease and desist letter because “flowercrystals”¬†is a registered trademark owned by another person who, you guessed it, sells flowers¬†encased in crystalline resin. (More details). […]

    6 months ago

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