Have a new mark that you want to use? I discussed in an earlier post that you should conduct a search for other marks that are the same or similar to your intended mark, before the launch. What happens if your search scores a “hit?”
Move Along – Nothing To See Here
You can just go with another mark, avoiding the other mark entirely. Whether you should do this before or after answering the following questions sometimes is self-evident. I would be stupid to launch “Matt’s Coca-Cola Experience” without getting permission from Coca-Cola, for example.
Mother, May I?
You could request permission or consent from the owner of the other mark; this often takes the form of license. An example would be a franchisee getting a license from the franchisor to use the franchisor’s mark. Do not count on a competitor from giving you a license, though.
Fight of Flight
Maybe you are free to use your mark, because the competitor’s mark does not apply to your market. Act with caution – the other’s mark could be strong enough to make it unwise to use a similar mark in another field.
The competitor’s mark may have a fatal weakness that you can exploit. The competitor may have failed to protect its mark, turning that mark into a toothless, paper tiger. There are times when it makes sense to launch a legal challenge to such a mark.
Will You Marry Me?
Maybe the other mark is ripe for a purchase. This can be a win-win when the price is right.
Baby Needs a New Pair of Shoes
You can roll the dice and go forward with your mark without answering any of the questions. Maybe it will work out or maybe you that decision will backfire. A finding of intentional infringement can make matters worse if you lose a trademark infringement lawsuit.
A Little Elbow Room, Please
Maybe you find that there are several other similar marks in use, and maybe you determine what you have relatively low legal risk by going ahead with your mark. Will you have to spend more time and money than you otherwise would to get your mark noticed? Will the crowded marketplace make it harder for you to get exclusive rights to your mark? Whether your mark is worth the effort will answer whether you should go with that mark or get a new mark.
As We Bid Adieu
Learning that someone else is using a mark that is the same or similar to your desired mark is not the end of the world. Getting guidance from a competent professional will be well worth it. This blog post is not a substitute for that advice. Please contact us if we can be of help.
This post provides general information only. This post is not intended to create an attorney-client relationship or to be legal advice about your situation. Laws change and your situation may be different. You should consult with a licensed attorney for legal advice specific to your circumstances.
© 2017 Matthew D. Macy