Plano, TX asked in Trademark and Intellectual Property for Texas

Q: Cease and Desist letter about trademark rights violation

I received a cease and desist letter from a law firm claiming that my business name is confusingly similar to their client's business name. They claim that it is in violation of trademark rights and that their client has incontestability over the usage of the name.

My question is that the name I am using is NOT identical, would this fall into the realms of copyright infringement? What options do I have?


4 Lawyer Answers

A: You didn't ask any questions, so it's not clear exactly what information you're seeking. With that being said, trademark infringement can be very costly. And either ignoring a cease and desist letter or responding with the wrong information can exacerbate the situation. Anyone who receives a legitimate cease and desist letter should consider consulting with a knowledgeable attorney ASAP.

Eugene Vamos agrees with this answer

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John Michael Frick
John Michael Frick
  • Frisco, TX
  • Licensed in Texas

A: In order to successfully pursue a claim for trademark infringement, it is not necessary that the infringing mark be identical; it is sufficient that the marks are so similar and the goods or services for which they are used are so related that it is likely to confuse or deceive the average consumer.

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Alec Allen Ross
Alec Allen Ross
  • Trademarks Lawyer
  • Miami, FL

A: Trademark protection often extends beyond exact trademark matches. For example, when the United States Patent and Trademark Office (USPTO) reviews trademark applications for a likelihood of confusion, what they generally look for is what is referred to as an overall commercial impression. This could be a particular word that is the same between the different trademarks or it could even be a similar meaning or similar sound. This is because consumers rarely fully remember a whole trademark. They tend to remember the most relevant part.

For example, if someone tried to trademark MIKE for sports apparel, that would almost certainly be refused due to NIKE. NIKE would also be well within their rights to enforce their own trademark rights (by sending their own cease and desist or even simply bring a legal action).

A real world example from a couple of years ago was when a small software company tried to trademark a pear as a logo. Apple sued them claiming the logo could cause people to be confused. The pear did not really look like Apple's classic logo. It was a pear, not an apple, and it did not have that "bite" out of the side of it. But in any case, it was a roundish fruit being used for a technology company (in this case, an app developer for a cooking recipe app).

With trademarks, it is important for trademark owners to protect their brands. Sometimes, this means enforcing their rights against similar (and sometimes less similar) trademarks. If a trademark owner does not enforce their trademark rights against others, they risk losing their protection.

You also mentioned that the other party has "incontestability." Incontestability can be filed for and granted after a trademark has been registered for at least five years. It grants the rights-holder additional trademark rights based on the length of time they have already had their registered trademark.

As to what options you may have. Without knowing more, it could be possible for you to negotiate with this other company and come up with a co-existence agreement. There is no guarantee that could work, but if you attempt this, I would recommend that you hire a trademark attorney to assist you with it. Some companies are more flexible than other companies and are sometimes willing to work with you to find a solution that does not harm their trademark rights while still allowing your trademark to exist.

Another option would be to consider rebranding. If you do decide to rebrand, I would, again, recommend that you hire a trademark attorney to run a comprehensive search to minimize the risk of a conflict, and then attempt to register the new trademark name.

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James L. Arrasmith
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A: Trademark infringement is based on the likelihood of confusion between two marks, rather than the exact match. Even if the names are not identical, if they are sufficiently similar and used in the same or related industry, it could still be considered trademark infringement. It would be advisable to consult with a qualified intellectual property attorney who can assess the specific details of your case and provide guidance on your options, such as responding to the cease and desist letter or exploring potential defenses.

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