Trademark Infringement Royalties

[erik_hover]

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

Hello.

I own a trademark, "Xxxxx", just the words in no particular font or style. We use the phrase on apparel in various fonts and styles for bachelorette party wear. There are a lot of other companies that use the phrase for the same purpose, to name a few, Target, Victoria's Secret as well as a number of online retailers. I have a couple questions...

1. When sending out cease and desist letters is it possible to, instead of demanding that the company totally stops using the phrase, offer a licensing or royalty option? If so, how is that worded in the letter?

2. I own a screen printing and embroidery company in which we produce the apparel with "XXXXX". Is it possible I can offer an option for the infringeing company to turn over all production of their current products containing the phrase to me?

Any and all help would be appreciated. Thank you in advance.

 

[quincy]

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

Hello.

I own a trademark, "XXXX XXXXX", just the words in no particular font or style. We use the phrase on apparel in various fonts and styles for bachelorette party wear. There are a lot of other companies that use the phrase for the same purpose, to name a few, Target, Victoria's Secret as well as a number of online retailers. I have a couple questions...

1. When sending out cease and desist letters is it possible to, instead of demanding that the company totally stops using the phrase, offer a licensing or royalty option? If so, how is that worded in the letter?

2. I own a screen printing and embroidery company in which we produce the apparel with "XXXX XXXXX". Is it possible I can offer an option for the infringeing company to turn over all production of their current products containing the phrase to me?

Any and all help would be appreciated. Thank you in advance.

I see that you have used your trademark since 2011 and your mark was federally registered in January of 2013.

1. It is possible to grant someone/a company a license to use your trademark. Licensing of trademarks can be tricky, though, because you could lose all rights to your mark if the license is not drafted carefully. For help in drafting a license, you need to consult with a trademark attorney in your area, though. Assisting you with this falls outside the scope of what this forum allows.

2. You can file a lawsuit against your infringers and collect damages by demonstrating harm. Damages can include all provable profits made by the infringer as a result of the infringement. You can also get an injunction to prevent further infringement. And a court can order that all infringing goods be destroyed. It is not likely, however, that a court would order an infringer to turn over all goods containing the infringed mark to you, the trademark holder.

I see a few areas of concern. One concern is that your trademark uses common words. Depending on how the other companies are using the two words that make up your mark, they may not be infringing on your rights. Anyone can use either or both words in some contexts. Another concern is that the companies in question may have no interest in licensing the mark from you. Another would be in proving profits made by the company as a result of their use of your mark or proving you have lost money because of their use.

I recommend you sit down with a trademark attorney in your area, not only for a discussion on the licensing of your mark (the pros and cons) and the drafting of a license that will allow you to retain control of the mark, but also to check out the products that are using your mark to see how, exactly, the words are being used.

Good luck.


(as a note, I am having your real trademark edited out of your post)