What should I do if I was sent a cease and desist for allegedly using a trademark? 5 Answers as of January 28, 2011

I have started a clothing line which has had positive responses and a major chain outlet is asking me to expand my line and move into more of their stores. I had applied for a trademark of the name and had to resubmit the paperwork a couple of times. Recently a company by the same name in a different state sent me a cease and desist email. They registered the same name a year ago in the clothing category. When I researched the name I chose, I couldn't find anything. I see they are listed in yellow pages as a beauty school. I am not sure that they are actually selling apparel of any sort even though they have the trademark registered that way. They do not have a website that I can find, and all indications point to them being a beauty school. What are my options for my trademark? Do they have the right to ask me to stop using the name? If they are not retailing clothing, do they have the right to prevent others from using the name? Can I use it everywhere but "their" area? I don't think this company has the financial fortitude to mount any real fight, but then neither do I at this point. I can't see how anyone would confuse the two companies, since they do not have a web site and the only business listing I can find shows that they are in the education business. Any advice would be most helpful.

Ask a Local Attorney. 100% Anonymous. Free Answers.

Free Case Evaluation by a Local Lawyer: Click here
Devon & Associates
Devon & Associates | Marcia A. Devon
You need to consult an intellectual property (patent, trademark, copyright) attorney. The trademark attorney should be able to quickly determine your legal position. For example, reviewing the cease and desist letter is step number 1. Do they advise you that they have a federal (U.S.) registration? You should respond to the cease and desist letter because you are leaving the opposing attorney with no alternative but to sue you to get your attention.
Answer Applies to: California
Replied: 1/28/2011
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
There are several factors that determine whether or not two marks are similar enough so as to create a likelihood of confusion. Two of these factors are generally given more weight than the others. They are (1) similarity between the marks and (2) channels of trade. In your case, even assuming that the two marks are similar, they use their mark in a different trade channel, i.e., beauty school services/supplies whereas you use the mark in a clothing line. This might be enough to negate trademark infringement.
Answer Applies to: California
Replied: 1/24/2011
Fish & Associates, PC
Fish & Associates, PC | Robert D. Fish
The devil is in the details. One would need to know what they registered, i.e. mark, priority date, classification, and goods and services, and similar information for your mark. Likelihood of confusion is a complex, multifaceted consideration, including similarity of goods; purchaser sophistication; similarity of the marks (sight, sound, meaning); strength of marks; evidence of actual consumer confusion; likelihood of expansion of the product lines; and defendant's intent in selecting the mark. In the Ninth Circuit (which includes California) the courts use the eight factor Sleekcraft test.

Weighing these factors often requires considerable experience, so unless you are going to simply acquiesce, it behooves you to contact an attorney.
Answer Applies to: California
Replied: 1/24/2011
Ochoa and Associates
Ochoa and Associates | Susan Ochoa Spiering
These are all loaded questions and if you received an official, formal "cease and desist" letter, it is best to consult with a TM attorney in your area. It will be worth the money you spend to try to keep you out of litigation.

Items to consider: Did you get a state or federal mark? Have you crossed state lines with your mark? How long have you had your mark? What is your priority date? Does it predate the other company asking you to stop?

Is the other company's mark valid for clothing ? is it a federal or state mark? Have they crossed into your state and done business? If so, when/what date?

You said the names are the same, but do they look alike? Stylized the same? Colors similar? Shapes similar? Would the public have a likelihood of confusion between your company and this other company? (this is the largest test to consider - likelihood of confusion).

Good luck.
Answer Applies to: Texas
Replied: 1/24/2011
Rhema Law Group
Rhema Law Group | John D. Tran
Questions involving trademark infringement issues are complex and are very fact specific. I would advise that you set up a consultation with a trademark attorney to discuss your matter fully, especially if litigation is a possibility in the near future.
Answer Applies to: California
Replied: 1/24/2011
Click to View More Answers: