What is the law regarding a design that has not been trademarked?

I am a graphic designer selling on Etsy. I have an item that I have been selling for the past year that is a Printable or Printed Hotel Welcome Bag Letter. Similar letters can be found on various outlets such as Pinterest, Google and Etsy itself etc. There are several sellers on Etsy all selling the same item. I received an email from a person who has just decided to open an Etsy shop and says that she created this item about 1 1/2 years ago and wants to sell this item but she prides herself on custom and original designs. She asked me to take it down. People rip off my designs all the time. However, am I correct to assume that unless she has trademarked that particular design when she created it, she has no ownership over it?

Asked on November 8, 2014 under Business Law, New Jersey


SJZ, Member, New York Bar / FreeAdvice Contributing Attorney

Answered 6 years ago | Contributor

Unfortunately, you are incorrect. Even if she did not register the trademark, she may still have protectible trademark rights, since trademark depends on use in commerce. More importantly, if she created the design, then she may well have copyright in it, even if she never filed for copyright, since copyright inures in the first person to create an original work. (Registration makes it easier to prove a violation and increases the compensation that can be recovered for a violation; but it's not strictly necessary to have protectible trademark and copyright rights.)

Clearly, she'd need to be able to prove that she created it first, she would not have copyright in it; and even if she did create it first, if she did not use it in commerce before you began selling it, she would not likely have trademark rights, since trademark is based on commercial use, not just creation.

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