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A company filed a Notice of Opposition in reply to our trademark application. Can I sell my business to settle the litigation?

San Francisco, CA |

I submitted a trademark application for my company, and it was approved for publication. During the publication period, I received a Notice of Opposition from a company stating that our trademark name would cause a likelihood of confusion.

I spoke with a few attorneys and they are confident that we have a good case because my company does not compete in the same market, or compete for the same customers of the opposing company. Additionally, the opposing company's trademark name is generic. A couple of attorneys mentioned that I should consider selling my business to the opposing company in order to settle the litigation.

Are there cases where the opposing company buys out the applicant company?

I would greatly appreciate if only experienced trademark or business attorneys with actual information reply to my question about buying/selling a company. Replying that I need to speak with an attorney is not helpful to me or the other visitors of this website.

Attorney Answers 9

  1. They would not be "reported cases" but anecdotal stories. It is legally permissible.

    The above is general legal and business analysis. It is not "legal advice" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also terms and conditions item 9, incorporated as if it was reprinted here.

  2. You can settle the dispute in many different ways, one of which may involve selling your business. But before you do anything, you need to retain experienced intellectual property counsel. The lawyers on this web-site cannot possibly give you meaningful advice in this situation as to the strategy you should follow.

  3. IF it is generic you really can't trademark it then.

    This is not a comprehensive answer and it is impossible to provide a meaningful response without a consultation. Call us for more information. 619.797.5456

  4. You said it best yourself - get an experienced lawyer to represent you. Discuss the case in detail with him or her and figure out the best strategy. It is legal to sell the company to resolve the matter. Good luck.

    The above is general information only and is not legal advice. The information provided does not form an attorney-client relationship, and should not be relied upon to take or refrain from taking any action. I am not your attorney until we sign a retainer agreement.

  5. It sounds like you are interested in settling the opposition. You need to approach the other party and make it clear that you do not believe that there is a valid case here, and that you would likely succeed in the opposition proceeding. However, at the same time, you are open to the possibility of settling this more amicably and avoiding the lengthy process of a cancellation proceeding. To this end, you are open to selling your rights in the trademark to them.

  6. On the contrary, telling you need to see an attorney is very helpful to you, unless you ignore the advice, in which case it is pointless and you are going to leave lots of money on the table.

    I think rather than selling, you might be better discussing a licensing deal, which would be a win-win. Strengthens and expands their mark, counters the "generic" argument [I am betting the attorneys said "descriptive" rather than generic], and lets you keep doing what you are doing, but under their umbrella of protection. Of course, I do not know the facts, and a license might not work at all.

    I would think you might sell the mark and the goodwill attached to it, but NOT the business in total, especially if you intend to stay in business, unless you can command a really high price and, for example, retire and lead a life of luxury.

    Of course there are cases where the opposing company buys out the applicant, also vice versa or some cross-licensing deal or some consent agreement (in Europe consent agreements are the most common settlement technique - I have done several hundred of those) because the opponents are often just wanting to protect their own turf and end the conflict and are inclined to work it out peacefully with an agreement so that both sides "win" and, as you seem to want, they don't have to pay legal fees except transactional for the prep and review of the consent. Being a mediator, I greatly prefer negotiated resolutions rather than adjudicated and imposed solutions as the parties are really in the best position to know what they really want and need and, as business people to see the opportunities as well as the conflicts upon which lawyers seem to concentrate.

    So, if you know the business people on the other side, particularly if you know them well, calling up and admitting nothing but that you think this should settle so both can save money and yet win, and give your proposals. Note in any correspondence that "this is non-binding and for purposes of settlement negotiations only."

    And, I can't resist, you should see an attorney. LOL

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

  7. I am really not sure what kind of response you can realistically expect from us?

    We have seen in many cases where a mark is opposed, a settlement can be reached. In some instances, a financial offer can be made to one party to assist with their rebranding efforts. At this point, we do not know what your case really looks like.

    Actually selling your business to them is certainly possilbe so long as there is a demand for it. They may have no interest in that and I would certainly get some professional insights before committing to that of course.

    I know you don't want to hear this, but you need to discuss everything over with your own lawyer in private. The specifc facts and circumstances will need to be fleshed out. Legal issues are akin to medical ones. You can go to WebMD and get some great info, but it cannot speak to you specifically only your Dr after careful examination can do that, right?

    Most of us here, including myself, offer a free phone consult.

    Best regards,
    Natoli-Lapin, LLC
    (see Disclaimer)

    The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the areas of business law and intellectual property to entrepreneurs, small-to-medium size businesses, independent inventors and artists across the nation and abroad. Feel free to call for a free phone consultation; your inquiries are always welcome: CONTACT: 866-871-8655 DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.

  8. "Are there cases where the opposing company buys out the applicant company?"
    No, because a case implies a judgment. If one company bought another, that implies they settled either before litigation began, or before a judgment was rendered. A case would never result in a judgment where one company was told to buy the other.

    If there was a settlement, that is not available for review, likely all parties involved had to sign an NDA.

    Is it allowed? Yes
    Will the person that filed a NoO want to buy your company? Nobody can answer that but them.

  9. I love Bruce's answer. Yes, you can sell your business, but unless it's a single-purpose entity, why? You can just sell the assets/IP/Goodwill related to this mark only and continue the rest of your business. But of course they'd have to be interested in acquiring you. Why would they do that if they can put you out of business with their Opposition and your unwillingness to fight it. Or, as Bruce said, you can simply enter into a licensing agreement. That all said, if you have spoken to several other trademark attorneys and they all uniformly tell you that you have a good chance of success w/re to your trademark application due to different classes of goods and a generic mark on the other side, then you certainly could fight them on this issue. Further, if the other side's mark is "generic" you can initiate a Cancellation proceeding of your own, which may give you enough leverage to make this entire thing go away. It appears you have a lot of options here, short of selling your business, which I think is totally unnecessary. So don't panic and make a hasty decision. Rather, weigh the legal, business and financial aspects of this scenario to come up with the best solution for you. And give some serious though about going on the offensive and altering the strength/leverage of your position in this case. Good luck!

    WINTER LLP Is Changing The Way Legal Gets Done. WINTER LLP Offers Flat Fee Trademark, Copyright, Corporation and LLC Packages. Please contact us today for a free consultation. Any information provided by WINTER LLP or Todd Winter is provided generally and does not create an attorney/client relationship. If you would like specific legal advice, you must retain us directly.

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