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Trademark Rights, Infringement and Dilution

Texas |

My sister and I started an Event Production Company. We plan to produce shopping events where vendors can apply to have a booth, and if accepted they pay us the fee and we invite the public to come and shop from those vendors - basically an upgraded and hip "craft show". We also had a logo drawn in our own likeness. After starting this business, we also decided that having a parent company would be a good idea, so we registered three dba names - and we had two versions of our logo.

Several months down the road, we received a "cease and desist" letter from a Screen Printing company (t-shirts, posters, stickers, and labels) whose name is similar - they have used three versions. They claimed we were infringing upon and diluting their trademark rights and that we must quit using any and all versions of our name and our logo (which was drawn in our own likeness).

In response to this letter, we offered a compromise where we would "cease and desist" using our parent company name and logo but continue using another name. Even though they print and sell items and we produce events and the two are not related, we felt it was an act of good faith and that the words were so commonly used in conjunction with each other they could actually be deemed one word, like the words "hot dog", so therefore, the name we would continue to use would be different enough, especially in different industries.

Also, before responding to them with this compromise we requested to legally reserve the name with the Texas Secretary of State. Upon reviewing our request, the Texas SOS agreed and deemed the words frequently used in combination, and therefore considered one word so we could then move forward with our name reservation without consent from the owner of the reservation.

We responded to them by certified mail on [content removed]. Since then we have received another letter, this time from an attorney who says we are still infringing upon and diluting their trademark. We discovered that on [content removed] they registered more dba's. This lawyer also claims they have federal trademark rights, even though they just filed for federal registration on [content removed] and it has not been approved. We also filed for trademark registration with [content removed].

My basic question is this - we believe that our logo and our name as the name of an Event Production Company does not infringe or dilute their logo or name as the name of a Printing business. Is this correct and should we stand firm?

We produce shopping events and they print and sell items like t-shirts, posters and labels. The businesses are in the same city. Our graphic logo is drawn in a caricature of our own likeness, their graphic logo is not drawn in anyone's likeness. We want to stand firm in the belief that our name and graphic logo does not dilute or infringe upon their name and graphic logo in regards to trademark rights - two different names, two different logos, two different industries. We have accepted money for our services already, so we do have proof of commerce under our mark. How can one company own exclusive trademark rights for ALL services and goods under a name - many businesses have the same or similar names in different and same industries. Our surname is included in our business name, can we use it without any problems - surnames cannot be trademarked, correct, but can they be protected?

Attorney Answers 3


Wow, that is a big one, just a mess.

I don't recommend that clients approach these types of issues as being "correct" or not but rather think about how far you want to take it and the costs.

There are a lot legal issues involved for which I would need to collect more facts and do more research prior to giving a conclusion. You certainly have an argument that some or all of your names are not dilutive. Did you use the name in commerce before getting the letter?

The first thing to consider are the risks of standing firm. Are you willing to go on with a lawsuit for this? Clearly they are spending some legal dollars on this and creating lots to litigate. The federal registration of your exact name (and assuming they have no intention of using it) raises a host of questions. Also, while you like the name, how valuable is it to your business? Some of it seems important like the Austin Shops part that you may want to negotiate even if you are willing to forgo the Bearded part. Put another way, how much time and energy do you want to devote to keeping the name rather then developing your business.

Bottom line is this question is fairly complex and not one for which you should take answers in this forum. You should go see a lawyer with trademark experience in Austin and soon. If you are reluctant to do that, then you have the answer to your question.

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Normally, we are able to negotiate a settlment that allows firms to do business without the expense of litigation. The strategy behind that is not something you would want discussed in this public forum, which you should presume is being read by the lawyers who sent you the letters. From what you describe, you should obtain confidential representation quickly.

Gordon Arnold
Direct: 713-972-1649

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The following is not legal advice and should not be relied upon to take or refrain from taking any action.

As noted by other respondents, if you're serious about doing business under any "Bearded Ladies" mark then you need to speak with a Texas-licensed attorney -- who should also respond to the cease and desist letters that you've received.

To prepare you for that meeting:

Forget about who filed what with whom when. While there may be some Texas-law specific procedural benefits from such filings, at the end of the day the question of which of you has the greater legal right to use a "Bearded Ladies" mark depends on the respective trademark rights that you two have actually created through the use of a mark. Filings create procedural rights, use of a mark creates substantive rights.

Through its use of "Bearded Lady" over the years, the screen printing company has established trademark rights in that mark and all marks that are confusingly similar and which will likely confuse consumers in the marketplace.

Based on your facts it appears that you've yet to use a "Bearded Ladies" mark in commerce and so you currently have no trademark rights (or if you've used it in advertising only, then only weak trademark rights). Your various filings demonstrate an "intent to use" a mark for which the screen printing company could properly respond. It's filings to reserve various trade name rights are generally irrelevant (as are yours). In short, the screen printing has a significant leg up on you in this dispute.

The issue, as you note, is whether your use of "The Bearded Ladies Present" would infringe the screen printing company's trademark rights (forget about dilution -- the screen printing company's mark is not "famous" which is a prerequisite to a dilution claim).

Courts in Texas use a particular multi-factor test to evaluate whether infringement (based on the likelihood of consumer confusion in the marketplace) has occurred. The one who is accused of infringement is not in the best mental frame of mind to objectively assess whether his or her mark infringes but you can read a typical infringement analysis here: Envision your mark instead of the defendant's and see where you come out on the matter -- and then have a trusted aunt or friend do the same thing.

Note: You need to evaluate your proposed "Bearded Ladies" logo use seperately from your use of a "Bearded Ladies" trade name. My gut reaction is that using the logo as a mark (so long as it does not also include the literal element "Bearded Ladies" ) would likely be non-infringing. As for using a "Bearded Ladies" trade name or any trademark containing that literal element, my gut reaction is that the screen printing company has a pretty good argument that such use would be an infringement.

Now you're ready to speak with your lawyer.

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