Posted on Jan 29 by admin.

When trademark litigation cannot be avoided, cost beneficial, mediated settlements are often the best resolution.

While my last article described the need for a strong mark as a necessary step in the trademark process, sometimes a cost benefit analysis causes us to be flexible when resolving disputes.

I recently had an interesting conversation with the Counsel for Converse, Inc. After filing a trademark application for a client, who included an 11-point star, Converse was apparently concerned about potential trademark infringement as a result of possible consumer confusion because my client manufactures athletic clothing. I find it is extremely unlikely that anyone would mistake an 11-point star for that of Converseâs 5-point star in a circle.

At the outset they filed for an extension in which to file objections to the application, however, they suggested that they would likely be satisfied if we would amend my clientâs application to note that my client will not place their mark on any shoes. As my client does not manufacture shoes, Converseâs request is of little consequence, however, this raises a much more important issue. The David and Goliath scenario.

What has become a common place practice, large corporations and the law firms representing them send out letters in which they demand a more restrictive filing or a cancellation of a trademark, which they allege is likely to cause confusion in the marketplace. By that I mean, that consumers would not be able to distinguish between their companyâs products and the company who has applied for registration of the mark.

This is often a classic example of the David and Goliath scenario. A large corporation with limitless resources attempts to impose its will on a small company. Unfortunately, the most reasonable and cost effective response to these situations is often to voluntarily restrict the use of the mark. Litigation of this nature can be an extremely expensive and time-consuming proposition for both parties. Therefore, if you are essentially giving up nothing (as in the case of my recent client who does not manufacture shoes) it is often best to recall the phrase that discretion is the better part of valor, make a minor change in your markâs registration and move on to make your company as successful as possible.

In the end, if a business was to fight over this issue, they very well may win the battle but lose the war as a result of the expenses of litigation. As a result, it is important that businesses perform the appropriate cost benefit analysis before launching into expensive litigation rather than a mediated resolution.

For a free consultation or to register your trademark contact us directly.