From Trademark Dispute to Peaceful Coexistence

Trademark disputes typically start with a trademark owner sending a cease and desist letter to the user of a mark the trademark owner believes infringes upon its rights.  Those trademark rights may be rooted in common law or based upon a trademark registration with, for example, the United States Patent and Trademark Office (USPTO).  Whether the demand letter comes from the trademark owner itself (typically, if a company, through its marketing department or General Counsel) or a trademark attorney on its behalf, the allegations and demands are typically as follows:

1. We are the prior user of a distinctive trademark
2. Your use of a confusingly similar mark on related goods/services creates a likelihood of consumer confusion (i.e. trademark infringement)
3. We are asking that you cease and desist use of your mark because you are damaging our goodwill
4. If you do not cease and desist use of your mark, we may take further action, such as filing a lawsuit for trademark infringement, unfair competition, etc.

The recipient of such a letter should consult with a trademark lawyer who can analyze the claim of trademark infringement, including the following:

1. Whether the sender is indeed the prior user of the mark.  This becomes particularly important when dealing with unregistered, or common law, trademark rights since a situation may arise where the sender and recipient both have trademark rights in separate geographic locations.
2. Whether the sender possesses a distinctive trademark.
3. Whether there are any defenses available, such as fair use (including nominative fair use, non-trademark use, etc.).
4. Whether there is a likelihood of consumer confusion, which requires careful analysis of the trademark infringement factors.
5. Whether peaceful coexistence is possible and, if so, under what terms.

In my experience, trademark attorneys do not always spend enough time on item 5.  Instead, the traditional thought is that a trademark dispute must result in one party’s use and the other party’s cessation of use of a mark.  However, that is not always the case and, oftentimes, parties can agree to peacefully coexist.  In my experience, there is usually a triggering event for the sending of the cease and desist letter, which may ultimately be addressed without having to actually cease and desist (e.g. sender needs to register trademark with the USPTO but the recipient’s application has led to an initial refusal even though a likelihood of confusion may not be likely).  They may do so by modifying how the mark is displayed, on which goods/services it may be used, and even where such use is permitted. It is worth exploring whether a resolution is possible, and defining how it can be memorialized in a Trademark Co-Existence Agreement, Trademark Concurrent Use Agreement or a Trademark Consent Agreement (Note: each of these kinds of agreements have different purposes and effects, and you should discuss with your trademark attorney).

A trademark infringement lawsuit, and even a trademark opposition or trademark cancellation proceeding with the USPTO’s Trademark Trial and Appeals Board (TTAB), can be very resource intensive.  While, in some instances, such disputes are unavoidable and unresolvable, you should consider coexistence, especially where your trademark rights may not be as strong or your claim of infringement may not be obtainable.