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Jun162011 | Steve O'Donnell

A painless trademark dispute

I’ve written before about trademark owners that have been a little overly aggressive in protecting their marks and have had some social media backlash. Recently I represented a trademark owner whose mark was being infringed and had the opportunity to try a more gentle approach that turned out very well for everyone.

A short time ago, I was approached by a business that has been using a trademark (“Mark”) for a couple years, but had not registered it with the trademark office. They discovered that another business in the same market had started using the Mark. We discussed the possible costs of a lawsuit and the problems that can come from a strong-arm approach and I decided that the first thing we should do is to file an application for registration of the mark based on my client’s use, and then to find out a little more about the infringer.

Within a few minutes of searching I discovered that the infringer had just started using Mark and did not file their own application with the trademark office--meaning that they probably had not invested huge amounts of money or time in exploiting Mark, in other words, they probably were not going to be interested in fighting this out in court.

I filed the application for my client and then drafted a letter to the infringer. I took the friendliest approach I could. I pointed out that my client had an application on file and had been using Mark for several years, and that we would defend Mark if necessary, but would rather avoid doing so if we could come to an agreement. Rather than the typical “cease and desist” letter, I stated that from my research it appears that they just started using Mark and that we’re assuming that they did not intend to infringe my client’s use of Mark. I even (with my client’s permission of course) said if they had already invested in printed matter with the mark, that we would allow them to use up their stock of such, provided that they don’t print more.

The response was as good as I could have hoped for. They had not substantially invested in the mark and didn’t realize they were infringing. They agreed not to use the mark again and had no printed material to use up. Easy-peasy-lemon-squeezy.

It’s not often that a legal dispute can be settled with an email exchange, but it is always a possibility. Too often it’s an overlooked possibility.

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Jun162011 | Steve O'Donnell

A painless trademark dispute

I’ve written before about trademark owners that have been a little overly aggressive in protecting their marks and have had some social media backlash. Recently I represented a trademark owner whose mark was being infringed and had the opportunity to try a more gentle approach that turned out very well for everyone.

A short time ago, I was approached by a business that has been using a trademark (“Mark”) for a couple years, but had not registered it with the trademark office. They discovered that another business in the same market had started using the Mark. We discussed the possible costs of a lawsuit and the problems that can come from a strong-arm approach and I decided that the first thing we should do is to file an application for registration of the mark based on my client’s use, and then to find out a little more about the infringer.

Within a few minutes of searching I discovered that the infringer had just started using Mark and did not file their own application with the trademark office--meaning that they probably had not invested huge amounts of money or time in exploiting Mark, in other words, they probably were not going to be interested in fighting this out in court.

I filed the application for my client and then drafted a letter to the infringer. I took the friendliest approach I could. I pointed out that my client had an application on file and had been using Mark for several years, and that we would defend Mark if necessary, but would rather avoid doing so if we could come to an agreement. Rather than the typical “cease and desist” letter, I stated that from my research it appears that they just started using Mark and that we’re assuming that they did not intend to infringe my client’s use of Mark. I even (with my client’s permission of course) said if they had already invested in printed matter with the mark, that we would allow them to use up their stock of such, provided that they don’t print more.

The response was as good as I could have hoped for. They had not substantially invested in the mark and didn’t realize they were infringing. They agreed not to use the mark again and had no printed material to use up. Easy-peasy-lemon-squeezy.

It’s not often that a legal dispute can be settled with an email exchange, but it is always a possibility. Too often it’s an overlooked possibility.

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