by Sara Straight Wolf
“HELP! I just got a letter from some company out west claiming my new product name infringes their trademark! What can I do? It would be so expensive to have to change the name of our product after we have put so much money into promoting it!”
Quite often trademark attorneys receive calls like this from clients who have adopted a trademark for their product or business, and after using the trademark for some time, they receive a cease and desist letter from another business claiming that they have infringed that other business’ registered trademark or common law trademark.
A person gains rights in a trademark through use. Generally, the first person to use a name or mark in connection with particular goods or services has priority in the mark. That person is referred to as the “prior user” or “senior user.” A person using a trademark later in time is called a “junior user.”
A trademark does not need to be registered with any state or federal agency to be a valid trademark; if a person has used a name or mark in connection with goods or services and continues to use the name or mark, that name or mark becomes a common law trademark.
If another person is using the same (or a very similar) name or mark in connection with goods or services, that person is guilty of trademark infringement if the person was the second to use the name or mark (the “junior user”), if the goods or services are similar, and if the use of the same mark by these two different businesses is likely to cause confusion. The first inquiry of your trademark attorney will be to find out whether you were the first to use the trademark. The next inquiry will be to look at the products or services bearing the name or mark.
For example, if a business uses the mark “Pampers” in 2012 as a trademark for baby booties and bibs, then Procter & Gamble, who owns the trademark “Pampers” for paper baby diapers, could win a trademark infringement lawsuit against the second person. Since both the senior user and the junior user are using the mark on products that are for babies, even though the products are not identical, the senior user would win the trademark infringement lawsuit. If the junior user was using the mark “Pampers” for fishing gloves, or for automotive motor oil, then it would be very much harder for Procter& Gamble to prove likelihood of confusion in the mind of the ordinary consumer about the source of these very different products. It is harder to win a trademark infringement lawsuit when the products are very different and they have different types of consumers, and when the businesses advertise in different places.
In summary, the first to use the trademark in connection with particular goods or services has priority. Your trademark attorney has to review your use of its trademark, determine when you first used the trademark, and review the claim of the other business. If the other business has registered the trademark, the registration will list a date of first use. In general, the first user has rights in the trademark. The trademark attorney will then determine whether your goods or services are likely to be confused with the claimant’s goods or services, and whether an ordinary consumer would think the goods came from the same source or manufacturer.
Your trademark attorney can advise you whether the business sending you a cease and desist letter has overreached, and whether the business claiming infringement is being too protective of its trademark under the legal standards for trademark infringement. If that is the situation, most likely you and the business that sent the cease and desist letter can reach an agreement so that each party will use the same or similar mark in a manner that is restricted to its own products, and sometimes the agreement will specifically disclaim use by one party on the other party’s type of products or services.