Apparel conflict for similar names but different industries

[UserX]

Using pseudonums for obvious reasons....

I own Company X Widgets and I have this name trademarked. My company is doing so well that I begin to start putting my trademarked name "Company X Widgets" on apparel (my company has nothing to do with apparel or anything remotely apparel-related itself). Soon after, the owner of "Company X" whose entire business is making apparrel contacts me, threatening to issue a C&D if we don't "work together".

He has a trademark for making "Company X" apparrel and I have a trademark for making "Company X Widgets" and I'd like to put my name on apparrel. Does he have a case and if so, do I have any recourse other than to just never make apparel?

Both are US companies in different states.

 

[quincy]

Using pseudonums for obvious reasons....

I own Company X Widgets and I have this name trademarked. My company is doing so well that I begin to start putting my trademarked name "Company X Widgets" on apparel (my company has nothing to do with apparel or anything remotely apparel-related itself). Soon after, the owner of "Company X" whose entire business is making apparrel contacts me, threatening to issue a C&D if we don't "work together".

He has a trademark for making "Company X" apparrel and I have a trademark for making "Company X Widgets" and I'd like to put my name on apparrel. Does he have a case and if so, do I have any recourse other than to just never make apparel?

Both are US companies in different states.

Yes, Company X Apparel could have a legitimate claim against Company X Widgets if Company X Widgets starts marketing Company X clothing items. Consumer confusion could result.

In what way is Company X Apparel suggesting that your companies work together?

 

[UserX]

Yes, Company X Apparel could have a legitimate claim against Company X Widgets if Company X Widgets starts marketing Company X clothing items. Consumer confusion could result.

In what way is Company X Apparel suggesting that your companies work together?

Thanks for the reply!

There were no specifics although I assume it's to either pay royalties or contract through them. We use apparel essentially for advertising and customer appreciation, not profit, so I don't want less than total control over it.

This is rather unfortunate and I'm not sure how any substantial customer confusion could result from someone getting a Company X Widgets shirt from CompanyXWidgets.com but regardless, is there an easy fix or workaround to this sort of (in my opinion) IP bullying?

 

[cbg]

Who is bullying who here?

I am not a lawyer, but if I were, I'd be more inclined to take his case than yours. Why should he allow you to encroach on his business just because you happen to feel like it?

 

[UserX]

Who is bullying who here?

I am not a lawyer, but if I were, I'd be more inclined to take his case than yours. Why should he allow you to encroach on his business just because you happen to feel like it?

Different opinions I guess (although I agree that your point is valid from a legal standpoint). I call threatening legal action when you're afraid of competition "bullying" although I guess it's more like running to mommy

 

[quincy]

Thanks for the reply!

There were no specifics although I assume it's to either pay royalties or contract through them. We use apparel essentially for advertising and customer appreciation, not profit, so I don't want less than total control over it.

This is rather unfortunate and I'm not sure how any substantial customer confusion could result from someone getting a Company X Widgets shirt from CompanyXWidgets.com but regardless, is there an easy fix or workaround to this sort of (in my opinion) IP bullying?

Do either you or CompanyX Apparel have your trademarks federally registered?

How is your CompanyX Widget apparel similar to the CompanyX Apparel apparel? Just names? Designs? Logos?

What sort of apparel is this? Tee-shirts? Baseball caps?

Are you selling the apparel on your website or are you giving it away as a free bonus?

Is there a cross-market between your widgets and the apparel company (do both of you market your goods nationwide to the same type of consumer)?

CompanyX Apparel could be exercising trademark muscles it does not have but a trademark owner is responsible for enforcing their own rights in their marks, or they risk losing their marks entirely.

Your use of your trademark on apparel may not be infringing on the rights of the other company at all, but a personal review of the trademarks involved and the uses that are in question and said to be infringing is needed to determine this better.

 

[cbg]

So when someone else decides to put "company X Widgets" on their product you're just going to stand by and say, yes sir?

 

[LdiJ]

Different opinions I guess (although I agree that your point is valid from a legal standpoint). I call threatening legal action when you're afraid of competition "bullying" although I guess it's more like running to mommy

You really should talk to an attorney that specializes in trademark law. The problem here is that you cannot give us most of the information we would need to be able to get you any real advice. However, I am going to give you an example.

If you have a company called Me Too Fashions and another company called Me Too Automotive I think that there is very little chance that the two would get confused if you put Me Too Automotive on your promotional clothing. However, if you just use "Me Too", then its a whole 'nuther story.

 

[quincy]

It will be necessary for you to sit down with an attorney in your area for a comparison of your apparel and the apparel marketed by the other company if you want a clear determination on whether your apparel infringes on the other company's apparel. We cannot do personal reviews on this forum.

In law, specific facts matter. That is why hypotheticals can be difficult to address on this forum.

That said, if you can answer the questions I asked earlier, I can give you some idea if there is "a easy fix or workaround" to handling the other company's threatened "work with us or cease and desist" notice you received.

 

[UserX]

So when someone else decides to put "company X Widgets" on their product you're just going to stand by and say, yes sir?

Yes and sorry about the side conversation here but since you asked, we've already done this. The only reason we got a trademark in the first place is so that IP trolls couldn't snatch it up and use it against us. There is actually another "Company X Widets" in our same exact industry and while some business men might say it's stupid not to use all possible tools in the tool box I think that IP laws are unethical. I like knowing that we can compete without sicing a lawyer on anyone.

 

[Zigner]

Yes and sorry about the side conversation here but since you asked, we've already done this. The only reason we got a trademark in the first place is so that IP trolls couldn't snatch it up and use it against us. There is actually another "Company X Widets" in our same exact industry and while some business men might say it's stupid not to use all possible tools in the tool box I think that IP laws are unethical. I like knowing that we can compete without sicing a lawyer on anyone.

IP laws are unethical? Really?

 

[cbg]

So you can get a trademark so that no one else can snatch it up and use it against you, but when you start using someone else's trademark that's okay? You can protect your business and your trademark against others, but if someone else tries to protect theirs against you it's unethical (not to mention "crying to mommy")?

You have a strange sense of ethics, is all I can say.

 

[quincy]

Yes and sorry about the side conversation here but since you asked, we've already done this. The only reason we got a trademark in the first place is so that IP trolls couldn't snatch it up and use it against us. There is actually another "Company X Widets" in our same exact industry and while some business men might say it's stupid not to use all possible tools in the tool box I think that IP laws are unethical. I like knowing that we can compete without sicing a lawyer on anyone.

You "got a trademark" so IP trolls couldn't snatch it up and use it against you? That makes absolutely no sense at all. Are you thinking "copyright trolls?"

A trademark identifies a product or service. The more distinctive or original the trademark, the easier it will be for a consumer to recognize it and distinguish it from all others.

There are companies that use the same or similar names (think of the various ABCs and the two Apples for famous examples). These companies can peacefully coexist (at least usually - the Apples have had a few skirmishes ) because they do not compete in the same marketplace. Your company and the apparel company can peacefully coexist, as well - if you stay out of each other's markets and do not compete for the same consumers.

There is nothing unethical about trademarks being used to distinguish the goods and services of one company from the goods and services of another. Trademarks (and logos and slogans) benefit consumers. By distinguishing one company's goods and services from those of another company, consumers are not confused or deceived when making their purchasing decisions.

 

[UserX]

Do either you or CompanyX Apparel have your trademarks federally registered?

How is your CompanyX Widget apparel similar to the CompanyX Apparel apparel? Just names? Designs? Logos?

What sort of apparel is this? Tee-shirts? Baseball caps?

Are you selling the apparel on your website or are you giving it away as a free bonus?

Is there a cross-market between your widgets and the apparel company (do both of you market your goods nationwide to the same type of consumer)?

CompanyX Apparel could be exercising trademark muscles it does not have but a trademark owner is responsible for enforcing their own rights in their marks, or they risk losing their marks entirely.

Your use of your trademark on apparel may not be infringing on the rights of the other company at all, but a personal review of the trademarks involved and the uses that are in question and said to be infringing is needed to determine this better.

The similarity is in the name - Company X vs Company X Widgets (the "Company X" portion is simply an adjective and we even work with a few other "Company X....." named business who enjoy sharing markets). He makes T shirts that say "Company X" in plain text and our logo is slightly stylized Company X Widgets in plain text with some embelishment around it as well as a "Made in ______", the "made in _____" part seems to me like it would clear any confusion right up since our companies are in different locations. I don't know if this is relevant but the USPTO has this logo itself as a supporting document for our trademark.

Right now we either give the apparel away (just shirts for now although we do have some other Widget-related items with our logo that we give out) or sell it basically at cost if we go to any events just to make our money back but we get a lot of requests so we are indeed planning on having an online store at our website. I would say that our markets have nothing to do with each other; our widgets have nothing remotely to do with clothing.

Thanks a lot for your time! I'm sorry the vagueness is making it hard to discuss and although I'm quite irritated by the situation, objectively I find it kind of an interesting scenario. Honestly the "Company X" part is an adjective like I said (it's only one word), so I'm a bit surprised that they were able to get a trademark on it at all.

 

[UserX]

You "got a trademark" so IP trolls couldn't snatch it up and use it against you? That makes absolutely no sense at all.

A trademark identifies a product or service. There are companies that use the same or similar names and they peacefully coexist because they do not compete in the same marketplace. Your company and the apparel company can peacefully coexist, as well - if you stay out of each other's markets and do not compete for the same consumers.

There is nothing unethical about trademarks being used to distinguish the goods and services of one company from the goods and services of another. Trademarks benefit consumers. By distinguishing one company's goods and services from those of another company, consumers are not confused or deceived when making their purchasing decisions.

This justifies regulation of counterfeiting, not IP, in my opinion. IP extends beyond deceiving customers to simply protecting the "first to the market" - this is actually the original purpose of IP laws and they go way back. This is a long and nuanced discussion for another thread, we're probably only half-understanding each other, and you've been quite helpful so I'm happy to agree to disagree!