The last few weeks I have had several conversations with prospective clients that have made a major mistake. When conducting their own common law or knockout searches, they found potentially conflicting trademarks. But instead of consulting with an attorney, they then contacted the trademark owner directly. There are various reasons why you might be tempted to reach out to a trademark owner. However, I would strongly urge you to speak with an attorney before doing so.
Not-So-Courteous “Courtesy Calls”
If you are researching a new potential name or slogan and come across something similar, please put down the phone. While you may think reaching out is “the right thing to do,” what do you think your call is going to accomplish? People tend to underestimate the importance of trademark rights. So while you may believe that if you let the other trademark owner know in advance, he or she might be “cool” with you using a similar name, I can almost guarantee that will not be the case.
Think of it from the trademark owner’s perspective. They have probably invested a lot of time and money into building up a brand based around a trademark name. On the other hand, you may have invested 30 minutes into a brainstorming session. So how exactly are they supposed to react to your call? You might as well be asking a total stranger for cash. Giving permission to someone else to use a similar name might devalue their brand. It might lead consumers to be confused about which business they are patronizing. Most trademark owners will not be okay with you asking for permission to potentially infringe upon their rights.
Trademark Infringement
If you contact a trademark owner about possibly using a similar mark, they will probably just say “no.” However, they may also threaten you with legal action if you decide to use the trademark. This happened to someone with which I recently had a consultation. A friend said that they had better “check in” with the owner of a somewhat similar trademark before going forward with their new brand. Well, they did call. But I can tell you that it was not a productive phone conversation, as one might expect.
By contacting the owner, you put a target on your back because they otherwise may not have ever found out about you. Instead, you are making them aware that you are out there using a name that you felt was at least close enough to their trademark that you thought you should call first. That just has “disaster” written all over it. If they believe that you are infringing or will infringe upon their trademark rights, you might be facing a lawsuit.
Pursuing Potential Infringement
Also, when you find someone that you think is infringing upon your trademark rights, it still makes sense to consult with an attorney. Then, if they believe it is prudent, you can have them reach out to the infringer on your behalf.
You want to take this approach for 2 reasons. First, the attorney will research your matter and make sure that the other party is the infringer, and not you. If you contact the other party with legal threats not knowing all of the law or facts, you may be surprised to find out that they have rights that are superior to your own. And they may come after you the same way that you did to them. And secondly, having an attorney send a cease and desist letter gives that letter more credibility. It shows the other side that you might be more likely to spend the money that it takes to litigate an infringement case.
Seeking Trademark Owner Consent
Another common situation where people mistakenly reach out to trademark owners is during the trademark application process. Sometimes, when a trademark applicant receives a likelihood of confusion refusal, they will seek permission from the other trademark owner to allow their application to proceed to registration. This can often be accomplished with an agreement between the applicant and owner of the registered trademark. However, it is another situation where you do not want to just contact that owner out of the blue.
If the Trademark Office has found that your name should not be registered because it is too similar to another name, then the trademarks are most likely pretty similar. And like in the example above, there is no reason that a trademark owner is going to want to potentially diminish the value of their brand by letting other similar names be registered. In this case, you may want to speak with an attorney. If the registration is subject to cancellation, then maybe there is a reason to negotiate an agreement between trademark owners. But cold-calling probably will not get it done, and could lead you into further problems.
Call an Attorney, Not the Owner of a Conflicting Trademark
If you would like to see if you can register your trademark, or you want to make sure to avoid infringing on the rights of a trademark owner, please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
