Letter Full of Lemons

Oh, no! This company says we are infringing their trademark.  They say we need to stop by, wait, that date has already past.  They say they are going to sue!  Well, %#@$, now what?  First, take a deep breath.  Then, you can set a course of action (or inaction).

Whether it comes in an envelope, over email, or through in instant message, a cease and desist request or demand should not be ignored.  That doesn’t mean it needs to be complied with, but it isn’t an automatic delete.  It is tempting to bury your head in the sand and pretend you never got it.  But that could cause immediate harm if the letter is true, or it could just mean you didn’t take advantage of an opportunity to reach your customer better.

That means the first step is determining if this letter purporting infringement is correct. Are the two marks confusingly similar?Are the goods or services the same as or related to the services that you are providing?  If you sell dentures, and they are selling airplanes, the likelihood of confusion is likely pretty low.

Does the company actually have the rights they claim?  Look to see if they have a registration of the mark?  Is it the mark they claim they have registered? You’d be surprised how often the answer to both of these is “no.”

Are they using the mark in real life – not just a registration certificate?  If so, are they using it on the same goods and services they claimed?  Are they still the same as or related to the services that you are providing?  Are they using it in the same geographical locations you are?  Do they only have a brick and mortar store in Ione, California, and you only have one in Elkhorn, Wisconsin?  Then maybe there is little risk of customers visiting both.

Assuming that the marks, registrations, and goods all line up to look like you are in big trouble, you should start planning your new mark.  Yes, there is always the choice of rolling the dice and waiting for them to actually file the lawsuit, but you are already on their radar.  Even if you wait until the suit, having a plan ready to implement will help you be ready when the time comes.  But if your risk tolerance is as low as mine, then you will implement that plan much sooner than later.  You may choose to contact the mark owner and come up with a plan for transition, or you may not.  It depends on you, them, and your plan.

If it is a close call, but you aren’t sure, then you have the harder decision.  You can do nothing and see if they follow through with their threats and fight then.  You can contact them and see if you can work something out that mutually benefits both, or you can fold like a broken umbrella and move on.

Let’s say you fold, that doesn’t mean that you are a wimp.  Maybe you are, or maybe you realize your marketing dollars and energy are better spent on a non-troublesome brand.  And that brings me to the third scenario, you think that the other side is full of baloney.  That could mean you point and laugh at them and make it an internal joke.

But even better, take it as a chance to evaluate your marks and marketing.  If they sent it, it is bothering them.  You have to decide is it bothering them because 1) there is some confusion in some way, and better marketing on your part means that you aren’t losing sales to those yahoos; or 2) they are feeling your presence in the market, which means yay, you have a presence in the market!  It can be a great catalyst to make sure your marketing darts are hitting the correct dartboard and hopefully getting close to the bullseye.

Even if you do realize that you are an accidental infringer and need to change, at least you know that you are marketing in a way that gets you noticed.  Yes, that is a bit of lemonade out of lemons, but sometimes, lemonade is awfully refreshing.

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