Claim of trademark and defense of same relies upon the actions of the owner. Claim of trademark is signified by either TM or a registered symbol (circle with R) although use of a such symbiology does not make an unregisterable designation a trademark. If the trademark is registered for a trade class (use) and a direct competitor is infringing upon the trademark then you as the owner have to defend your rights by hiring an attorney for example. Forensics will determine if you have a case. A solution could involve a simple request to advise the competitor to cease the infringement or up to or including litigation. You would be responsible for cost associated with the forensics and other attorney related fees. There is no assurance a court would award damages even if you were to pursue and realize a successful lawsuit. More info at http://www.uspto.gov/
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Hi William, thanks for the info. Yes, our trademark is federally registered and we've sent the C&D letter. The opposing attorney is claiming that the mark is descriptive which makes it weak to begin with. I understand that concept, however, it's the group of words together which makes it into an actual recognizable mark. So what I'm trying to figure out is if the configuration of descriptive words that constitute the mark itself bear any weight in determining if the mark is strong. edit

Seems the opposing attorney has confirmed infringement. Your possession of a registered mark should carry considerable weight. If you have maintained renewal for some time you may be able to apply for "incontestability" status. In any regard the opposing attorney is calling you out on the claim in that as I said you have to defend your right. Without knowing particulars it seems to me there is some doubt as to an objective defense so in any subjective debate the outcome is a roll of the dice. In our bath we have shampoo from Rusk (Conair) with the TM "Healthy". The opposing attorney would probably see "Healthy" as "descriptive" and "weak" also but I doubt any attorney would be cavalier in challenging a $2 Bil. company to defend itself based upon such an opinion and blatant infringement. Perhaps the issue is less about the technical aspect of word craft and more about credibility in conviction to defend. edit

Mike, this seems like a question that your attorney should be answering based on the facts of the case. I don't know that I have ever met an "opposing attorney" that can't come up with some kind of theory that their client isn't in the wrong in order to answer a Cease & Desist letter. Trademark enforcement is highly fact dependent. It really comes down to how much consumer recognition you have built in your mark as a designation of source (you) and the likelihood of consumer confusion based on the other guy's activities. edit

I've read that other factors that will be determined is if they are in the same industry/business/service as you and if their geographical influence conflicts with yours. You didn't mention either of those. edit

Industry and geography are both factors related to the consumer recognition and confusion tests. Essentially, people are only likely to be confused if both marks are being used in similar industries and locations. However, the Internet and recent trends in marketing are undermining both of those factors. As with most legal issues, it really depends on the specific situation. edit

For the past two years, I have a company with a specific name as well as location. My previous business partner has opened recently a competitive business (yes, same industry) with two of the same three words (Test ### Hawaii). He has added two other words and is also adding the location (### Test XXX Hawaii). My clients are confused and think we are the same company. What can I do? edit

First, try to determine what the confusion is actually worth to your business. This generally means lost sales. It needs to be an actual dollar value and you should try to capture both past and foreseeable future (3-5 years) damage to your business. This number should really guide all future decisions about this issue.

Next, envision the best possible outcome. It generally involves the other person paying past damages, changing their name, and making a public apology for any confusion. This isn't going to happen, but it is helpful to know what you want.

Next, envision the worst outcome. This involves years of litigation, hundreds of thousands of dollars in (unrecoverable) attorneys fees, many hours of time and worry, and the other side wins. This probably isn't going to happen either, but you should be prepared for it.

Now, it is time to find a trademark litigator who will do a case assessment for a reasonable fee. Hopefully, you can find someone to make a candid assessment of your claim, available remedies, and likelihood of success. Get estimates for a Cease & Desist letter and various stages of litigation. Compare this info against your estimated damage number. Be aware that most litigators are overly optimistic. Decide whether legal action makes business sense.

If you have not already attempted to, contact the person and ask them to stop and/or attempt to negotiate a mutual resolution business to business (in writing). All other options are worse. edit

Thank you Devin,
I appreciate your thoughts. It has cost us about $35,000 this past quarter in lost sales and good will.

As he was a business partner who registered his company to do business in our state one week after stepping down - I do not believe that Cease & Desist, damages, negotiations or name change is an option. I am willing to pursue it however, if I can trust the litigator to work in the best interest of my corporation.

Can you refer anyone in the State of Hawaii who would be interested in helping, and who and take into account the fact that we are re-building due to this situation?

No longer the victim,
Toni edit

My error - he registered Before stepping down -- registered June 4, stepped down June 11.
Toni edit

http://www.templetons.com/brad/copymyths.html

10 myths about copyright edit

Thank you William,
This is most helpful.
I promise not to contact Mr. Templeton :-)
Aloha,
Toni edit

Toni, it sounds like this is a signficant issue for your business and I do recommend seeking counsel. Because this also relates to the breakup of a prior business arrangement, you should also think through any other issues that might surface. Would the ex-partner counterclaim based on some perceived wrong in the prior relationship? Similarly, you may have other claims based on breach of prior obligations to your business. In short, this sounds messy.

Unfortunately, I don't know any trademark attorneys in Hawaii and don't generally make casual referrals. Sorry I'm not more help on that front. For litigation, I would try to find 3 small to mid-size firms that specialize in intellectual property and talk to them.

Finally, there is probably no such thing as a litigator (or any other service provider) you can trust to work in the best interest of your company. Hopefully, you can find someone who will do their best work for you, be honest in their dealings, and clearly communicate about risks, costs, time, etc. It will fall to you or one of your staff to manage the litigation against your business needs--to budget, plan, and understand what the attorney is doing and whether it serves your needs. An outside litigator can't do that for you and the incentives are not there for them to do so. This is why large companies have litigation departments that do nothing but manage litigation and help executives make decisions about the risks, costs, and strategies involved. edit

Thank you Devin,
I appreciate your thoughts. I'll keep searching for the right firm.
Meanwhile, the focus is on re-building and creating great services.
Aloha,
Toni
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