Q: If a company has their logo elements trademarked and another company wants to sell products in the same category with
an almost identical brand logo with the same meaning, is there a way to co-exist? Can the 2nd company offer to pay an up front and/or annual trademark usage fee to the first company in order to selling similarly-branded products in the same category? If so, what is a customary fee to secure the ability to continue using their logo in commerce rather than the 1st company asking them to cease and desist? Is it a one-time fee or an annual fee or both? Thanks for your help.
A: Short answer: Maybe.
Long answer: It depends on the willingness of the first company (who has the trademark registration) to either license its trademark rights, or otherwise work out a deal with the second company to allow a potentially confusingly similar mark to exist in the same market. The scope of the first company's rights also impacts the analysis (federal vs. state trademark registration, market geography, etc.). If the company is willing to settle a dispute or offer a license to the second company, the "fee" and its structure (annual vs. per item vs. one-time, etc.) is generally left open to the parties to negotiate, and will likely depend on multiple factors such as the value of the brand, the value of the product or service being sold, industry margins, geography, and maybe others.
If you received a cease and desist letter, I strongly recommend immediately seeking the advice of an attorney with experience in trademark law. You may have valid defenses to claims of potential infringement (e.g. being a senior user with common law rights).
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