Logan, UT asked in Intellectual Property and Trademark for Utah

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.

1 Lawyer Answer
Griffin Klema
Griffin Klema
Answered
  • Trademarks Lawyer
  • Tampa, FL

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).

Good luck!

Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.

The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.

Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.