Am I required to stop my U.S. Trademark Application just because a company sent me a letter requiring I do so?

Asked over 1 year ago - Philadelphia, PA

Hello,
I started a company making aprons. I named the company after myself. I submitted a trademark application. I recently received a certified letter from Chanel, Inc., stating that I am infringing on their trademark and basically asked me to stop using my name, withdraw my application and never try to use the name again. I use my first name (which has an additional "l" at the end) and last name and the artwork I use as my logo resembles a sketch of a woman in a vintage apron. Is this something that they automatically send out and what are my options. Not sure if this matters, but the name I use is my birth name. Any advice or guidance will be greatly appreciated.

Attorney answers (8)

  1. Jeffrey S. Marlink

    Contributor Level 12

    9

    Lawyers agree

    1

    Answered . You are not required to abandon your application because a company sent a letter requiring you do so, if the trademark examiner finds confusion he will issue an Office Action which may result in you preferring to abandon the mark rather than attempt to prosecute it.

    You may be infringing on Chanel's mark and will need to visit a trademark/intellectual property attorney to determine if you are, it will take more details than you should provide on Avvo to determine that. My colleague is correct that Chanel is a famous mark and can result in dilution of the famous mark. You will want to see an attorney soon to find out if is infringing and this will result in you having to stop using your mark.

    Answering of your question is merely general advice and does not constitute legal advice. None of the statements... more
  2. Alexander H Butterman

    Pro

    Contributor Level 13

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    Answered . Your best advice is to consult with a trademark attorney about your specific situation if you care about being able to register and probably use the mark. Trademark infringement involves a complicated legal analysis that not even general lawyers inexperienced in trademark law can properly undertake so you do NOT want to try this yourself. Are you "required" to "stop your application"? No, but you are proceeding at your own risk, especially financially. If you don't "stop" or abandon your application and the USPTO approves the application, Chanel Inc. could very well oppose your application which will likely result in a mini-litigation in the Trademark Trial and Appeal Board at the USPTO. But before that, if your application still needs to undergo examination, an examiner could cite the similarity of your mark to Chanel's mark (or any other similar mark for similar goods) as a basis to refuse to register your mark. Your application is not simply being "rubber-stamped" by the USPTO. And, in addition to all of that, if you want to continue trying to use the mark, whether or not registered, and Chanel wants to stop you, Chanel could sue you for trademark infringement and if they win, they could either get an injunction against your using the mark or even sue you for money damages if you have sales of your product with the mark that is declared infringing. And now you arguably are considered to have knowledge of Chanel's mark and your continued use of your mark could be deemed intentional, thereby holding you liable for as much as three times the damages Chanel could prove. Not to mention, that at that point a court could REQUIRE you to stop using the mark regardless of how much you have invested in it.

    The fact that the mark consists of your first name does not award you any rights in the mark that are superior to an earlier legitimate user of the mark (or something similar).

    Here are the factors that need to be considered to determine if there is a "likelihood of confusion" between your mark and that of Chanel's and whether or not you will be required to stop using/registering your mark:

    (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
    (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
    (3) The similarity or dissimilarity of established, likely-to-continue trade channels.
    (4) The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
    (5) The fame of the prior mark (sales, advertising, length of use).
    (6) The number and nature of similar marks in use on similar goods.
    (7) The nature and extent of any actual confusion.
    (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
    (9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
    (10) The market interface between applicant and the owner of a prior mark:
    (a) a mere “consent” to register or use.
    (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party.
    (c) assignment of mark, application, registration and good will of the related business.
    (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
    (11) The extent to which applicant has a right to exclude others from use of its mark on its goods.
    (12) The extent of potential confusion, i.e., whether de minimis or substantial.
    (13) Any other established fact probative of the effect of use.

    After reading these factors, I would hope you can appreciate the value of seeking attorney assistance to guide you through this matter or simply decide to abandon the mark and walk away while you still can with minimal loss.

    Alex Butterman is a trademark attorney with Staas & Halsey LLP (http://www.staasandhalsey.com), a Washington, D.C.... more
  3. Trina Ann Longo

    Contributor Level 12

    5

    Lawyers agree

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    Answered . Only your own experienced trademark attorney can answer your questions after a full analysis of all of the facts surrounding the situation. And don't give any more facts here as this is a public forum. You may have several options. What those options might be depend upon the specific facts and circumstances. It could be that you are are able to use the name despite any claims in the letter, or maybe a settlement agreement could be worked out with Chanel, Inc. so that you can continue to use the name. Again, your own attorney will be able to advise you once she knows the facts.

    Do not try to answer Chanel's letter by yourself. You will be in a much better position by hiring your own experienced trademark attorney who can respond to Chanel after a full review of the facts. And your own trademark attorney will be able to assist you with responding to any Office Actions your application may have received or will be receiving by the United States Patent and Trademark Office.

    If you care about this mark (and you likely do, as it is your name), hire an experienced trademark attorney ASAP.

    Best of luck!

    This answer is for general information purposes only. This communication does not constitute legal advice, nor... more
  4. Daniel Nathan Ballard

    Contributor Level 20

    5

    Lawyers agree

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    Answered . Do not let the following comment from Attorney Butterman get lost in all the other responses: "The fact that the mark consists of your first name does not award you any rights in the mark that are superior to an earlier legitimate user of the mark (or something similar)."

    In short, Donna Chanel from Peoria cannot lawfully sell perfume or any related product under the brand name "Donna Chanel." Yes, even if it's her real name.

    The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and... more
  5. Clark AD Wilson

    Contributor Level 13

    5

    Lawyers agree

    Answered . I am not sure I completely understand your facts (your name is Chanell? and the mark is Chanell?). The names of living individuals typically cannot be protected, but with a famous old brand like Chanel, they may have more behind their argument. Basically, this is not a cut and dry case, so I highly recommend that you speak with a trademark attorney before moving forward.

    This comment is NOT LEGAL ADVICE. The question asker and any third-party reading this comment SHOULD NOT RELY... more
  6. Bruce E. Burdick

    Pro

    Contributor Level 20

    4

    Lawyers agree

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    Answered . So your first name is Chanell and you started a company selling CHANELL aprons and then got a Cease & Desist Letter (CDL) from an attorney for Chanel, Inc. the cosmetic company.
    1. NO this is not something they automatically send out, but it is something fairly routine to them because there are lots of infringers of the Chanel marks.
    2. Your options are three (1) ignore the letter - they may go away, but now that you have their attention that is not likely, (2) self-help - respond to their letter on your own, but that will nearly always be a disaster as you are not a trademark infringement attorney and do not know what to say. If you make a mistake, you may increase your liability and lose a case you might otherwise have won., or (3) hire an attorney - this will give you the best chance for avoiding disaster. The attorney should know how to respond without making any damaging admissions and yet obtaining the best results possible for you.

    There are several possible settlements I can envision:
    A. You stop and pick another name. That will make Chanel happy and make you start over.
    B. You modify the name. For example: CHANELL LUTTRELL aprons. You would need to negotiate a consent from Chanel, Inc. Hard to do that reliably without an attorney's help.
    C. You fight them and don't change. I think you might have a decent case, but that may not stop them from suing. If you can't afford to defend a $100,000-$3,000,000,000 lawsuit, with the possibility you lose, then you won't choose this option.

    Good Luck. My off the cuff recommendation is option 3 and settlement 1, hire an attorney, switch names and end this thing.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is... more
  7. Elizabeth Jami Oliner

    Contributor Level 7

    2

    Lawyers agree

    Answered . As the others have advised, you should go ahead and consult an attorney, who can help you prepare a response to Chanel. But no, you do not need to immediately abandon the trademark application. You should work with an attorney who can determine your options for settlement with Chanel. You may be able to simply limit your goods and agree to never go into the hand bag space/use a logo or design similar to Chanel's. OR, you may end up settling by agreeing to change the name in some way.

    You should keep in mind that Chanel is a famous mark and a brand with a lot of money to spend on lawyers. So, getting into a law suit with that type of company can cost you a lot of money if Chanel wants to fight you to the end.

    Talk a lawyer and try to settle! Good luck.

    Olinerlaw.com
  8. Sreenivasarao Vepachedu

    Contributor Level 14

    1

    Lawyer agrees

    Answered . Using a registered trademark without permission is infringement. The USPTO may reject your application, if it is already registered or confuses the public. Consult with a trademark attorney.

    This is not a legal advice or solicitation, and does not create an attorney-client relationship. Consult with an... more

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