Should I be worried that another company contacted me about trademark infringement?
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Should I be worried that another company contacted me about trademark infringement?
A company called marmalade cafe contacted me and said that my company name marmalade on main was confusing its customers and had their lawyer
draft a cease and desist or they will take judicial action. We are both restaurant they are located with 8 or 10 locations in Los Angeles area, and we are a
small startup in San Diego. We have never heard of they’re company before this. Is this common? They have a service mark principal register as
marmalade cafe, does that mean they can stop anybody from using the word marmalade in their name?
Asked on March 11, 2016 under Business Law, California
Answers:
SJZ, Member, New York Bar / FreeAdvice Contributing Attorney
Answered 8 years ago | Contributor
It's not that they can stop anyone from using the work "Marmalade" but they can stop someone from using it in a business name if the combination of the name, the location[s] of the businesses, and the type[s] of businesses could reasoanbly confuse customers as to the affiliation of the companies or their identity. It is a very fact-specific inquiry, and you are advised to consult with an intellectual property attorney about the situation; the lawyer can advise you as to the strength of their case and your options. Working against you will be that you are both in the same line of work--restaurants--and the names are very similar; that increases the likelihood of confusion. Working for you is that you are in different cities with (presumably) different customer bases--that reduces the chance of reasonable confusion.
Illustration of how they can't stop all use of "marmalade," but only confusing uses: I used to work for an educational textbook company whose main product was the "Coach" workbook, so called because it "coached" students to do well on tests. The "Coach" handbag company brought a suit that we were infringing their trademark. The case was dismissed by the court, because the court felt that no reasonable person would confuse textbooks and handbags--ergo, they could not stop a nonconfusing use of the word "Coach."
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