Service marks and trademark infringement lawsuits

You should definitely take a stand. Large retailers have regularly brought lawsuits against smaller retailers in the hope of "squashing" competition. Success will depend on the "one word" that you use. The strength of the trademark will depend on the type of word you are talking about. Fanciful marks are coined terms specifically created to function as a mark. think of Polaroid, Exxon and Xerox. These words were unknown to consumers before being created as marks. They are the strongest marks and are very protectable, meaning you probably can't use the word even if you are usign it for a differnet product like "Polaroid T-Shirts" of "Exxon Fertilizer."Suggestive marks suggest qualities which are desirable for a product, but do not actually describe them. Think of "7-Eleven" for a convenience store, "Seventeen" for a teen magazine, or "Best Buy" for cheap electorincs. Though not as strong as fanciful or arbitrary marks, suggestive marks are distinctive and highly protectable.Descriptive, surnames, and geographical marks which are merely descriptive of goods or services, are much weaker than fanciful, arbitrary or suggestive marks. To be protectable, these marks must have secondary meaning. That means that out in the marketplace when people hear that mark, they don't just think of the generic word, they think of the product. It is this "secondary meaning" that generates the most litigation. Our firm has represented many businesses, large and small, that have sought to enforce or defend against these types of lawsuits. Particularly if you do something completely different than the large retailer, you stand a great chance of success. A declaratory judgment is almost always part of a trademark lawsuit. It is a court judgment that declares a company's right to use a particualr mark; so it would be very valuable to you and your company. My contact info is on my profile if you would like to discuss this in further detail.

While I do not disagree with the other answer, I wish to provide some additional points to consider. One is the cost of litigation - you can go broke being "right." That said, if you have a strong case, you shouldn't feel intimidated merely because the opponent is a large company.

I agree that the key will be the word in particular that you are allegedly infringing - as well any overlap between the respective markets served be each company. Also, since this other company is a "major retailer" the mark might be considered a "famous" mark. If so, the company will have enhanced rights in its mark. The main point on which I agree with the prior responder is that it is crucial that you have the full details of your case reviewed by legal counsel experienced in handling such matters. My Dallas firm would be happy to assist, or could provide a local referral to counsel in Houston, if you'd prefer. Good luck!