Am I infringing??

Jennifer

Hi folks.  I started a company called The Cozy Cookie Company and sell gourmet cookies online with the domain name www.cozycookie.com</A>.  I opened for business last September and have not noticed much confusion from customers.  Our logos look different.  Our products are different.  Anyway, the Edson Wright Company have just discovered me and are concerned that our websites are so similar and that our product has a nearly identical name.  When I searched for the domain name I wanted, I did not think to look if any similar names like theirs was in use.  My question:  Am I infringing on their trademark?  I have not filed for a trademark of my own.Jennifer2007-2-3 1:57:6

steve

I can`t say if you`re infringing but I can say that if they had been
smart they would have also taken the plural domain name at the same
time they took the singular.

There are some very good attorneys active on SUN who specialize in IP issues. I`m sure they could help guide you.

If you`re willing to share the experience, would you mind posting
updates on this thread as things progress or when it`s resolved?

From one cookie maker to another, I wish you all the best.

Jennifer

Thank you.  I`ll try to keep the thread updated with any new info.  I just started sifting through the USPTO`s website, trying to figure out how to apply for a trademark and how much it will cost me.

patentandtrademark

I don`t know that there is ever an easy answer to such a question.  I would engage an attorney that works in the area of trademark law.
How much money would you lose if you were forced to close up shop?

patentandtrademark

Having a trademark registration does NOT provide protection for a charge of trademark infringement.  Your trademark infringement liability is NOT related to the time you receive any kind of notice.

pepperlegal

Jennifer,Because your respective marks fall under different classes of goods/services, my sense is that an infringement claim from the other company would be tough to sustain.  The other possibility is that you have "diluted" the other company`s mark under the very recent Federal Trademark Dilution Act.  Dilution differs from normal trademark infringement in that there is no
need to prove a likelihood of confusion to protect a mark. Instead, all
that is required is that use of a "famous" mark by a third party causes
the dilution of the "distinctive quality" of the mark.  What constitutes a "famous" mark is the subject of a multi-part test, and I would need to conduct a thorough review of Cozy Cookie mark to provide an answer on the dilution question.This is just designed for general info, since I cannot provide specific legal advice on these boards.

Jennifer

I don`t know that there is ever an easy answer to such a question.  I would engage an attorney that works in the area of trademark law.
How much money would you lose if you were forced to close up shop?

My business can`t afford an attorney.  I just opened and the business is not yet profitable.  I`ve probably spent in the neighborhood of $2-3K of my own money in branding my product (incorporation costs, domain registration, logo design, packaging costs, etc...)  This does not include the many hours of time I have spent in developing the brand.  Also, switching domain names will set me back to square one in terms of search engines.  I`ve proposed to Edson Wright that I switch my domain name to www.cozy-cookies.com</A>.  I`m waiting to hear what they think.  We have a 3 hour time lag and have had trouble hooking up on the phone since neither of us man the phones all day. 

patentandtrademark

Having a new business and trying to build a base is tough - very tough.  If it costs you $3,000 and many hours of time each time you have to start over with a new brand, that has its own expenses as well.  Hiring an attorney is a significant expense.  Getting sued is also a significant expense.  I don`t know that there are any easy pain-free answers here.  Did you understand the point that your filing for your own trademark application is NOT a way out of the situation at this point?

Nuevolution

As a good friend of mine told me, as long as you are not in the same industry you are OK. Remember you sell cookies, they sell teddybears. Two different industries. It would be different if you they were selling cookies just like you. Don`t take this as legal advise, but I am in the same hole as you. My company`s name is Nuevolution I offer web design and development, the other company is named Nuevolution, and they are a bio-research company. Two different industries and professions. So in no way am I tarnishing or infringing their name or services. Even if I tried, their reseach doesn`t mean a thing to me. from what I know, they are aware that I excist. Now who get`s the trademark for the name? Well, Im working on it. Now would I impose on them using it, Not at all, two different industries. What you can do is contact James Lindon, he can explain it better than I can.

rossb

Jennifer -I agree with ujeans take on this - since you sell actual cookies and they sell dolls that look like gingerbread cookies with a great smell, it seems to me that coordinating some of your efforts could produce a benefit for both companies.  Cross promotions would seem to be a perfect fit.  You advertise their product, they advertise your product and you help each other out  - both in terms of sales and in SEO as reciprocal links (from what I understand) help out a lot.That would be where I`d focus my first efforts.  Make nice, be friends, help each other, everybody wins...R-

ujeans

Thanks for the comment Rossb.  I was starting to think that no one was reading my post.  Again, while it is good and all to consider the trademark aspects, I`d rather make friends with them.  It`s less expensive and you stand to make more money in the long run.

Jennifer

At this point, and based on a previous discussion hosted both by Pepper and P&T, it seems to me the problem has moved out of trademark into "enforcement."Jennifer, you`ve said the other company not only is aware of you, but has escalated to the point they`re not happy about your company name. Which of you has the resources available to do something about it? From what you`re saying, the other company seems to have the money, time, and an attorney willing to take some sort of action.I`m wondering if you could modify your existing brand, rather than starting over totally? Could you make your product something like "Jennifer`s Cozy Cookies?" In that case, you`d move alphabetically into a whole different arena, and put significant distance between the two names in any search. I`m thinking that redoing the artwork only to include your name ahead of "cozy" would be much less expensive than a total rebranding, wouldn`t it?Right now the term "cozy" is the distinctive focus. From a legal perspective, would this strategy have any benefit?
Now this is an excellent idea!  Thank you CraigL! Hopefully the artist can put my name in without messing up the look of the logo.  From a legal perspective (not that I`m a lawyer) I would think that it would calm the fears of the other company.  I will put this in my back pocket and use it if plan A does not work.  Plan A, of course, is to peacefully co-exist with the other company.

Jennifer

Having a new business and trying to build a base is tough - very tough.  If it costs you $3,000 and many hours of time each time you have to start over with a new brand, that has its own expenses as well.  Hiring an attorney is a significant expense.  Getting sued is also a significant expense.  I don`t know that there are any easy pain-free answers here.  Did you understand the point that your filing for your own trademark application is NOT a way out of the situation at this point?
I`m not sure I understood that point actually.  I take it that succesfully registering my own mark does not prevent an infringement suit.  It seems the the main purpose of registering a trademark is to notify everyone that you are using the mark for the specified goods.

Jennifer

Thanks for the great input Rossb and ujeans.  As it would have it, I got to speak with the other company today.  It went better than expected.  They seem willing to work together to make the most of this.  We agreed to put a link to eachother`s websites on our own, to help redirect any lost or confused customers.  They asked that I do not sell gingerbread cookies because their product is in the shape of a gingerbread man, and so it could confuse people.  I agreed to that.  I also suggested that I sell her cookie toy on my website...we could do a drop-ship arrangement or something.  We did analyze our web traffic a bit and its pretty clear that I`m not getting any hits intended for their site.
So I will continue using the name "Cozy Cookies" at least for now.  I did like CraigL`s suggestion so much (to change the name to "Jennifer`s Cozy Cookies") that I might do it anyway.
Now one question remains:  Should I fork over all that cash and register "Cozy Cookies" (or Jennifer`s Cozy Cookies)?
Thanks everyone for pitching in to save my little cookie company!  You guys are the best.

rossb

Jennifer -That`s awesome news, I`m glad it seems to be working out so well.  Keep us posted!Maybe you can still bake gingerbread cookies, just do it under contract for them, they can include some with each doll they sell.  You then get a percentage of each sale.  That way you get another sales outlet and they get another product to sell that compliments their existing product.  Another win-win for both sides...  Just a thought...R-

tm4smallbiz

Now that you might have an agreement from the other company, there are a few things you could do to strengthen your position:- Hire an attorney.  The only way to make sure all angles of the situation are being examined.- Get the agreement in writing.  Otherwise nothing prevents them from changing their position at a later date.- Have a comprehensive search done for your brand name to make sure there is not another entity out there that may have a claim of infringement.  You don`t want another unexpected claim to pop up in the future - one that could cost you more money and/or headaches.- If the other company and you are co-existing peacefully and there are no other threats of infringement, then you could file to federally register your trademark.  Although owning a registration is not a defense it is valuable to enhance the protection and value of your brand name.Note: This posting is not formal legal advice as I have not been retained and may not have all the relevant facts.