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Trademark Infringement?

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ejy77

New member
What is the name of your state? Texas

I recently started a service company which I will call "Company Paws Pet Care" (I'm using "Company" in place of the actual word to protect my privacy). Pet sitting & dog walking services are provided to a single area in Texas. I have no plans to franchise or grow much beyond the area I service. I am a company of 1 and don't even have a website yet.

I got a text message from the owner of "Paws Pet Care" located in another state which says I'm violating her trademark. The text was well written and seems like it was a copy and paste variety either from a lawyer or previous issue with another company. I've confirmed she has trademarked "Paws Pet Care" federally. She also just recently franchised her business although there are none in Texas and only 3 total in the US.

There are dozens of companies across the U.S. that use "Something Something Paws Pet Care". At least one is even trademarked itself (before hers was).

It seems like a real stretch for her to claim that customers would be confused since we are currently not in the same region and our logos, theme, colors, etc. are completely different. Also, while my business name is Company Paws Pet Care, I go by Company Paws. Even in my logo, Company Paws is a different font and color than Pet Care which is on a 2nd line and really serves the purpose of telling people what I do.

I get that she is trying to perhaps protect a future franchisee who may open in TX but I think it's a little aggressive to go after anyone that wants to use "Paws Pet Care". I'm curious if she trolls the internet and is looking to cash in on what is clearly a popular term in the pet industry. I've already invested in the development of a website (not yet public) and marketing materials. I really don't want to flush it down the toilet if she truly has a weak case that will unlikely go anywhere. Welcome everyone's thoughts.
 


quincy

Senior Member
What is the name of your state? Texas

I recently started a service company which I will call "Company Paws Pet Care" (I'm using "Company" in place of the actual word to protect my privacy). Pet sitting & dog walking services are provided to a single area in Texas. I have no plans to franchise or grow much beyond the area I service. I am a company of 1 and don't even have a website yet.

I got a text message from the owner of "Paws Pet Care" located in another state which says I'm violating her trademark. The text was well written and seems like it was a copy and paste variety either from a lawyer or previous issue with another company. I've confirmed she has trademarked "Paws Pet Care" federally. She also just recently franchised her business although there are none in Texas and only 3 total in the US.

There are dozens of companies across the U.S. that use "Something Something Paws Pet Care". At least one is even trademarked itself (before hers was).

It seems like a real stretch for her to claim that customers would be confused since we are currently not in the same region and our logos, theme, colors, etc. are completely different. Also, while my business name is Company Paws Pet Care, I go by Company Paws. Even in my logo, Company Paws is a different font and color than Pet Care which is on a 2nd line and really serves the purpose of telling people what I do.

I get that she is trying to perhaps protect a future franchisee who may open in TX but I think it's a little aggressive to go after anyone that wants to use "Paws Pet Care". I'm curious if she trolls the internet and is looking to cash in on what is clearly a popular term in the pet industry. I've already invested in the development of a website (not yet public) and marketing materials. I really don't want to flush it down the toilet if she truly has a weak case that will unlikely go anywhere. Welcome everyone's thoughts.
A trademark holder is charged with the task of defending the rights in their trademark. If they allow others to use the same or similar name (logo, slogan, whatever) they risk losing all rights to the mark.

It is not uncommon, therefore, for a trademark holder to send out cease and desist letters to any and all who are using the same or similar name, this whether the recipient of such a letter is infringing on the trademark holder’s rights or not.

Whether your trademark infringes on a mark that existed prior to your mark is, ultimately, a question for a court to decide, this if the alleged infringer does not comply with the trademark holder’s demands and a lawsuit results.

Trademark law centers on consumer confusion. If your use of the name causes consumers to be confused as to the origin of your goods/services and causes consumers to believe you are affiliated in some way with the original trademark holder, the original trademark holder has a good basis for a lawsuit.

I recommend you take the notice you received to a trademark law attorney in your area for a personal review.

Good luck.
 

ejy77

New member
Thanks, Quincy. Just curious, if I simply add Texas or Professional in front of Pet Care, e.g., Company Paws Texas Pet Care or Company Paws Professional Pet Care, would that solve this issue at hand because it would break up "Paws" and "Pet Care", the latter of which you cannot trademark.
 

quincy

Senior Member
Thanks, Quincy. Just curious, if I simply add Texas or Professional in front of Pet Care, e.g., Company Paws Texas Pet Care or Company Paws Professional Pet Care, would that solve this issue at hand because it would break up "Paws" and "Pet Care", the latter of which you cannot trademark.
How much of a change to your existing trademark would be necessary to satisfy the current trademark holder (or any other trademark holders who might now find your new name infringes on their rights) is something I can’t tell you. Sorry.

It is always best when starting a business to do a thorough trademark search before choosing the name that will be used to identify your goods/services. The whole purpose of a trademark is to distinguish one company’s goods or services from those of all others. The unique names (like Google, Nike, Kodak) do this best.
 

LdiJ

Senior Member
Thanks, Quincy. Just curious, if I simply add Texas or Professional in front of Pet Care, e.g., Company Paws Texas Pet Care or Company Paws Professional Pet Care, would that solve this issue at hand because it would break up "Paws" and "Pet Care", the latter of which you cannot trademark.
I don't think that you should assume that you are violating a trade mark until you have a local trademark attorney review things. As you said, the word "paws" is included in lots of different company names who are in the pet industry.
 

quincy

Senior Member
The fact that the other company has a registered trademark and has notified ejy77 that ejy77’s name infringes on the registered mark is reason for concern. It indicates the trademark owner is keeping a close eye on the marketplace for similar companies using similar names.

Because ejy77’s company is a new one, a trademark infringement lawsuit is one way to quickly bankrupt it. It is also a good reason to change the name now before the company is well-established and a lot of time and money has been invested in promotion.

Choosing a new name now, that isn’t similar or the same to another (or others) already in use, and making the new name a unique one to make it stand out from the crowd of “Pets” and “Paws” companies, can be a smart move.

That said, a personal review by a trademark attorney in Texas, of the actual names being used and of the notice that was received by the company claiming infringement, is certainly advised - especially if ejy77 decides to keep the current name.
 

ejy77

New member
For what it's worth, I definitely plan to keep "Company" in the name. My husband owns a pizzeria with "Company" in the name and this was our way to informally link the 2 business under us. There are dozens of examples across the U.S. that are "Something, Something Paws Pet Care" Does she have the ability to notify all these small, local business that they are infringing on her trademark? What if they've been around longer than she? Or, does she only have the ability to go after companies that were started after her trademark registration date?
 

quincy

Senior Member
The trademark holder can send out cease and desist letters to anyone and everyone she believes is infringing on her trademark rights. Cease and desist letters are the most widely used method trademark holders use to enforce their rights.

Do trademark holders always have the rights they claim to have? No. They are sometimes overly aggressive and send out letters to those who are not infringing.

But it will sometimes take a court to determine this. And when it gets to the lawsuit and court level, it gets costly.

It is ultimately up to you to decide what to do. A letter has no force of law behind it so you are free to ignore it. If served with a summons and complaint, however, the claim can no longer be ignored.

I recommend you speak to a trademark lawyer in your area for a personal review. If the lawyer believes the trademark holder’s claims are unfounded, the attorney can draft a response to the letter telling the trademark holder that.

Good luck.
 

ejy77

New member
The trademark holder can send out cease and desist letters to anyone and everyone she believes is infringing on her trademark rights. Cease and desist letters are the most widely used method trademark holders use to enforce their rights.

Do trademark holders always have the rights they claim to have? No. They are sometimes overly aggressive and send out letters to those who are not infringing.

But it will sometimes take a court to determine this. And when it gets to the lawsuit and court level, it gets costly.

It is ultimately up to you to decide what to do. A letter has no force of law behind it so you are free to ignore it. If served with a summons and complaint, however, the claim can no longer be ignored.

I recommend you speak to a trademark lawyer in your area for a personal review. If the lawyer believes the trademark holder’s claims are unfounded, the attorney can draft a response to the letter telling the trademark holder that.

Good luck.
Thanks, I have contacted several local attorneys already today to get their thoughts and feedback on how they'd handle.
 

quincy

Senior Member
Thanks, I have contacted several local attorneys already today to get their thoughts and feedback on how they'd handle.
I think that is smart.

Good luck with the trademark holder and good luck with your pet business.
 

quincy

Senior Member
PMalhotra, commercial messages and commercial links are prohibited on this forum. Please reread the terms and conditions of use.

Your post was reported for moderator review.
 

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