Can it be Trademark Infringement because you use one word of a competitors name?
I got a letter from a large company telling me to stop using my slogan "Think Outside the Block!" They are saying since they have their company trademarked (and it include one of those words) that I am creating trademark infringement. I guess I'm confused because I'm not using their name and they don't have that one word trademarked...only their whole name. I'm a very small business (just myself and one part time employee) and I can't afford to spend thousands on an attorney to fight a big corporation over this. But I have this slogan on EVERYTHING and can't really afford to give in either.
Attorney answers (2)
Some additional facts are needed. What goods or services are involved? I'm assuming perhaps that the "Block" is H & R Block and that you're involved in tax services.
Here are some initial thoughts:
1. Generally, one company can use another's name (and mark) to compare and contrast competing goods/services as long as the first company gives proper credit that it's using the other's mark or name.
2. However, I'm assuming you're not doing #1. It seems instead that maybe you've created a servicemark ("slogan") that is a play on the other company's mark, or maybe it's just coincidence. In any event, you might indeed have a problem, because - and you've put your finger on the practical part of this - even if you are legally free and clear, the other company can cause you financial headaches if they want to press an action against you. {See my Legal Guide on selecting a trademark.}
3. Even though you're only using a part of the other company's name, they may claim to have a "famous" mark, which might allow them to stop you from using any portion of theirs. Think: Coca Cola.
4. Don't give up all hope - there are some options but it depends on additional facts. For instance, how long have you been using your mark? How long has the other company known about you? Are your goods/services much different from the large company's?
Among other things, there's a small chance that you might be able to negotiate with the other company to allow you to put up a disclaimer that you're not associated with them, rather than having to change everything.
Hope this helps.
Pamela Koslyn
Reputation Level 20
Answered over 2 years ago.
Business Attorney in Los Angeles, CA.
Yes, it can be infringement. Trademark infringement is a very fact-specific inquiry and the answer is almost always "it depends." The most important factors are who's using what, when they started using their mark, and whether the products or services represented by your mark and their mark are the same or similar or likely to be closely enough related to cause CONSUMER CONFUSION.
The essence of a trademark infringement claim is whether the consumers are confused, and whether those customers find them and patronize when they seek you, or as is your bigger competitor's concern, if they find and patronize you when seeking them. Consumer confusiton is measured by paid surveys, and by unsolicited genuinely confused consumers who send email asking "are you the ABC company that makes widgets?"
Consumers can't be expected to remember companies' slogans except the most famous ones, so even one copied word among several different words can cause confiusion if it's the one word that distinguishes the mark. Again, it depends on the word and the mark and how it's used.
Consumers are usually only confused if the goods or services your respective companies offer and the same or similar,, but sometimes companies expand into intuitively unrelated areas, and something consumers are very unsophisticated and are very easily confused.
Trademark rights holders sometimes use those indications of actual confusion to police their marks, and they HAVE to enforce their rights or they risk losing them. And of course sometimes big companies try to scare away potential competitors even if they're being overzealous in their enforcement efforts.
You do have the practical issue of not wanting to fight this bigger company who presumably has been using their mark longer than you have and thus has superior rights. You don't mention whether you even have a registered trademark.
The upshot of all this is that no one can advise you of your respective rights and respond for you or help you to respond to this "cease and desist" demand without getting all the facts from you and analyzing the infringement claim. Consult an IP lawyer ASAP.
Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.
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