Trademark infringed, How to proceed.

[justsomeguy]

What is the name of your state (only U.S. law)? TX

I have a mark that I registered several years ago. A local company has created a similiar mark and I sent a cease and desist letter.

(A similiar case would be if someone Started Academy Sports Batting Cages. Academy sports is a national sports store chain, and I'm sure they would sue. )

The company I'm dealing with is not willing to discontinue use of the mark but would be willing to enter into a license agreement.


I've contacted an attorney who says a licensing agreement would cost me upwards of $2500, and to fight it could be +$10K

If I license it I'm protecting my mark but allowing some other company to use it that I don't know, and don't want to be affiliated with.

Anyone have any suggestions?

 

[divgradcurl]

What is the name of your state (only U.S. law)? TX

I have a mark that I registered several years ago. A local company has created a similiar mark and I sent a cease and desist letter.

(A similiar case would be if someone Started Academy Sports Batting Cages. Academy sports is a national sports store chain, and I'm sure they would sue. )

The company I'm dealing with is not willing to discontinue use of the mark but would be willing to enter into a license agreement.


I've contacted an attorney who says a licensing agreement would cost me upwards of $2500, and to fight it could be +$10K

If I license it I'm protecting my mark but allowing some other company to use it that I don't know, and don't want to be affiliated with.

Anyone have any suggestions?

What sort of answer are you looking for? You've already approached the other guy -- you have your three choices in front of you already, try and negotiate a license agreement, sue him for trademark infringement, or forget about it. I guess you could try and sell him the trademark outright, but other than that, there isn't much left you can do. Your trademark isn't going to enforce itself -- either enforce it, or forget about it.

 

[justsomeguy]

I guess I don't understand the point of Trademarking then if you a smaller company? I mean the Trademark costs $350 - $1000 but if it's going to cost you $10,000+ to fight someone that is using it??? what's the point. Why not just mark the TM instead of the R so that you can show it's pre-existing use in the event YOU ever get sued, but either way you can't defend it unless you have tens of thousands of dollars at your disposal??

 

[divgradcurl]

I guess I don't understand the point of Trademarking then if you a smaller company? I mean the Trademark costs $350 - $1000 but if it's going to cost you $10,000+ to fight someone that is using it??? what's the point. Why not just mark the TM instead of the R so that you can show it's pre-existing use in the event YOU ever get sued, but either way you can't defend it unless you have tens of thousands of dollars at your disposal??

Remember, registration isn't required to acquire trademark rights -- simply using the trademark to identify your product and services give you rights to a trademark. Registration broadens the "reach" of your mark, and gives you additional enforcement options, etc.

As to the second part of your question -- let me turn that around on you. If you, the trademark owner, doesn't think its worth it to spend the money it takes to hire a lawyer to enforce your mark, why should anyone else care either? If the alleged infringer, in this case, isn't causing you tens of thousands of dollars in actual (or potential) losses, maybe it isn't worth it to go after this infringer. Trademark law (and other intellectual property laws) allows you to essentially stake out a claim to something, and gives you the legal tools to defend your claim -- but it's up to you to enforce your rights, and if you won't do it, nobody else will.

 

[justsomeguy]

If you, the trademark owner, doesn't think its worth it to spend the money it takes to hire a lawyer to enforce your mark, why should anyone else care either?

I absolutely think it's worth it, and unfortunately I'm going to have to gather the funds to do it. Letting one person take my mark like this opens me up to anyone else taking it. And even if this "one person" is not harming me today, them setting the precident that it can be used by anyone could cause me major harm if a major national retailer desides to start using my mark to describe a line, or a section, or who knows what.

I just wish in a case like this if it is blatant and obvious you could have the right to seek legal costs. My understanding is you can't. I wouldn't even think twice if I could pursue legal fees.