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Does this business have grounds to sue me on trademark infringement?
Anonymous2 views9 answers
I began a dog training business in California 1 year ago called K-9 Faux Paws.
I was notified by and individual in Florida stating that I was infringing on their trademark which they registered 8 years ago. They are asking that I cease and desist and are threatening monetary damages if I don't comply by Friday. The name they registered is FauxPaws. I did a trademark search when I began my business but only searched for my exact name K-9 FauxPaws. Does she have grounds to sue me?
Two points to emphasize:
(1) Do not disclose real facts about a legal dispute in a public forum, and
(2) even though the owner of "Faux Paws" has federally registered that phrase as a trademark that
(a) does NOT mean the registration is valid [if, for example, the branded services are not being offered in interstate commerce] and
(b) does NOT mean that someone who uses even the exact same mark is infringing "Faux Paws" if that other user [in this case you] is using it to brand services that are offered in a region of the country far distant from where the original brand owner is offering its services. The rule is that once the original brand owner enters the same geographic marketplace as the subsequent then, and only then, must that subsequent user stop using the trademark [or else that continued use will be infringing (but never the prior use)].
In short, the other party's federal registration gives it a leg up but its existenct does NOT end the analysis. You need to hire your own trademark counsel. Good luck.
The criterion is liklihood of confusion which is a subjective standard. Reasonable minds might differ as to whether your marks are likely to be confused, but the case would not be dismissed as a matter of law. You may wish to negotiate, you may wish to change your name, you should certainly speak with a trademark attorney who can give you personalized advice.
If they have a federal trademark registration for the plain word mark in the class of services that covers dog training, quite likely they do have grounds. A federal trademark registration has national reach and you cannot avoid trademark infringement by adding to a registered mark. You should see a trademark attorney soon to see what they have registered and help figure out your options and possible defenses.
In my experience, unless there is significant money at stake, a letter from a lawyer to the trademark holder asking for a bit of time to review the issue will be accommodated. If they have researched what you are doing, they will likely prefer to give you a bit more time if (in their estimation) you have no meaningful defenses or there is little money at stake and, thus, are likely to capitulate.
Do act quickly though!
Good luck!
As a franchise attorney I'm sure the IP attorneys will advise you not to disclose any specific information (like you have) on a public forum like this. The test for trademark infringement is likelihood of confusion: would a reasonable consumer confuse K-9 Faux Paws with Faux Paws? Sounds confusing to me, but who knows. Kind of like "Burger McDonalds" vs. "McDonalds." McDonalds' franchise attorneys would be all over the former company like mad dogs, believe me. You really need to consult with a trademark attorney for specific advice . . . and pronto. Good luck!
Kevin B. Murphy, B.S., M.B.A., J.D.
Franchise Attorney & Franchise Expert
Director of Operations - Mr. Franchise
FRANCHISE FOUNDATIONS APC
Depends, but how much would you bet you are correct?
Trademark litigation attorneys are expensive and the other party certainly have superior rights. The names are confusing enough that a clear answer is not possible without reviewing all the facts.
Again, how much would you bet? 20K to 50K? if not stop using the mane immediately, apologize nicely, change the name of your business, and next time consult a TM attorney BEFORE you start your business.
Gordon Philip FiremarkEntertainment LawyerLos Angeles, CA ·
Yes, if your product and hers are in the same 'class of goods'.
The test here is whether there's a likelihood of confusion in the mind of the average consumer for the product.
That said, there may be other defenses, and you'd do well to consult with an intellectual property attorney before responding to this C&D. How you respond could have an impact on whether you'll have to pay any money, or have an injunction issued against you.
Ideally, the settlement should be documented with a release agreement, to ensure that the other party can never sue you later on.
So, hire a lawyer... it'll cost less than what's at risk if you don't.
There could be various reasons why you cannot be sued, including the fact that there is no likelihood of confusion between the two marks since you might compete in geographically distinct markets.
Michael
www.accessipgroup.com
This is not a simply question, but the fact that there is a federal registration under what appears to be very similar name and similar services does not bode well for you. Of course, you may argue there is no likelihood of confusion given the registrant is doing business in Florida and you are in California, and it is a service business, as opposed to goods. You need to consult a trademark attorney and discuss your options, costs, etc. to decide what to do.
