# trademark infringement



## jbagwell (Dec 16, 2009)

I recently received a c & d letter from a "big box" company regarding our company name. The similarities are so far off but we're a start up and monies are tight and attorney fees are steep. Anyone gone through or heard of someone going through similar situation that may have gone to litigation with a good or not so good outcome?


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## kimura-mma (Jul 26, 2008)

Hi John, sorry to hear you got a C&D. I've been in the same boat myself once or twice.

The best thing to do is find a local IP attorney and set up an appointment. Most will offer a free consult so you can ask a few questions. The first thing you want to find out is how similar the marks are (in the opinion of the attorney). Second, you want to know how much the legal fees are going to be. And third, you want to know what your chances are of winning (the attorney probably can't give you more than just an educated guess.

From a business perspective, you should really figure out how much you are financially invested in the name. If it's substantial, it could be worth taking on the legal battle. If not, it may be cheaper and easier to come up with a new name.

I'm not a legal professional, but if you'd like to PM some more details, I'd be happy to provide some additional input.


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## boatmat (Oct 4, 2011)

John,

If you have a commercial liability policy,then contact your insurance agent/company and file a claim.Some insurance companies will cover those types of perils.

With the above in mind,IP disputes are complex and very expensive.I personally spent 200K and three years in court,not to mention (valuable time away from my business and family)as a plaintiff on a blatant Trademark issue several years ago and although I won the battle, I ultimately lost the war for the above reasons.

After that painful life lesson, my advice is to avoid litigation(and any form of it) at all costs.You mentioned that you are a startup,so your time,money and sanity will be better spent building your business instead of taking on a deep pocketed big box corporation.I definitely agree with Tim that that you need to talk to counsel(IP attorney),but keep in mind that they get paid to fight, and they can't guarantee a favorable outcome even if you are correct.
I would be more then happy to discuss this with you as well in private if it would help.Unfortunately, I have intimate knowledge of section 43 of the Lanham Act ( which governs federal trademarks). 

Shoot me a pm and I will forward my phone number to you.I hope this helps from a Plaintiff's perspective.


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## rbforrest (Mar 20, 2010)

Just to emphasize Kimura's point. Notice he said "The first thing you want to find out is how similar the marks are (in the opinion of the attorney)." It doesn't matter how similar you, your friends, family, dog, etc., think the marks are. Get an impartial third party's opinion.


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## buehrle (Jan 14, 2008)

how about showing us your logo or whatever they say looks like theirs and let everyone give their opinion ? maybe you can tweak it to keep both parties happy.


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## kimura-mma (Jul 26, 2008)

Since he's already received legal notification on this, it's probably not a good idea to go public with too many specific details.


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## jbagwell (Dec 16, 2009)

Thanks for the responses and yes we've retained legal and like you said, he'll fight for us for as long as he's paid. You're correct, everyone has an opinion but legal is the most important. I'll be glad to share my company is named academy apparel inc. and going up against academy sports + outdoors. The main issue at hand is the domain name. It's amazing what one can trademark - just 1 single word.


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## essarr1972 (Oct 31, 2011)

if one tradmarks a name and logo here in the u.s.a. can a person in another country also use that name?? and for the same use?? if it's trademark pending here in the u.s. will it only be protected here in the u.s.??and if i ship over seas and the name is being used in that country for the same thing (apparel) can i get in trouble legally???any help would be greatly appreciated...thanks everyone..


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## kimura-mma (Jul 26, 2008)

essarr1972 said:


> if one tradmarks a name and logo here in the u.s.a. can a person in another country also use that name?? and for the same use?? if it's trademark pending here in the u.s. will it only be protected here in the u.s.??


Trademark registrations are only valid within the jurisdiction that it is registered. So when you apply with the USPTO, it is only protected in the US. A person in another country can use the same mark for the same goods and services in that country. If you want to register a mark in multiple jurisdictions at once, you need to apply for international trademark protection.



essarr1972 said:


> and if i ship over seas and the name is being used in that country for the same thing (apparel) can i get in trouble legally???


I'm not sure what the law says, but it would probably be very expensive for the trademark owner in the other country to action against you. But to be sure, it's probably best to consult an attorney on this one.


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## gotshirts2ink (Nov 12, 2009)

What is the name of your business?


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## AlkalineOm3n (Nov 30, 2011)

gotshirts2ink said:


> What is the name of your business?


" my company is named academy apparel inc. and going up against academy sports + outdoors. "


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## Flash Gordon (Mar 28, 2011)

I hope there's some light at the end of the tunnel for you.


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## Austin300 (May 24, 2009)

essarr1972 said:


> if one tradmarks a name and logo here in the u.s.a. can a person in another country also use that name?? and for the same use?? if it's trademark pending here in the u.s. will it only be protected here in the u.s.??and if i ship over seas and the name is being used in that country for the same thing (apparel) can i get in trouble legally???any help would be greatly appreciated...thanks everyone..


 
What you need to understand is that other countries
have laws on their books that do indeed protect 
the rights of foreign companies IP even if they
aren't selling their products in that country 
AT THIS TIME.

196 + or - countries in the world and they all
have their own laws regarding trade, commerce
and IP.


*If you have to come to a T-shirt forum and ask*
*"Can I get in trouble if" you are already on your*
*way and nine times out of ten you know that*
*you are attempting to grab the dragons tail without*
*the dragon noticing...*


.


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## TShirtsInk (Jan 29, 2007)

I believe it is called the "Madrid Agreement"

Treaties and Contracting Parties: Madrid Agreement (Marks)


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## TygerPromotions (Apr 24, 2013)

I say grab that dragons tail and yank it's *** around. We had an issue with Monster energy drinks a while back because one of our artists took their logo, reversed it, warped it just a bit and proceeded to use it ALL OVER THE PLACE. Long story short, we spent a lot of money but Monster lost, we have since discontinued our "3DL" line for fear of further prosecution but Monster lost. 
Nobodies graphics are safe, trademarks are tricky....

is it really worth it?


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## strike3sports (Jun 24, 2013)

You could contact the company or attorney yourself to see if there is anything you could do to make both parties happy. Maybe you just need to make a small change to the name or logo. It could be something simple or it could be a big battle ahead. Either way good luck hope it all works out for you.


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