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Written by : Hayden Trelles
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hey everybody my name is marcelo dominguez and i welcome you back to my trademark channel here you are going to learn about everything trademark related whether you're a small business or medium-sized business online or offline if you haven't subscribed i invite you to do so right now before you even start watching this video if you are wondering how in the world am i going to put a stop to trademark infringement how am i going to stop that person from using my name slogan brand trademark because they've been using it after i started using it then you want to stay tuned and watch everything i have to say because you might take a few take home tips you see trademark infringement is a really big deal it's a big deal on amazon even off of amazon if you have an online store or if you have a brick and mortar store right now the issue is obviously more prevalent in online businesses and on amazon because of what is going on people working more behind their computers rather than visiting brick and mortar locations but the issue of trademark infringement has been around for a really really long time it is such an important issue that you need to make yourself aware of for various reasons which i am going to touch on in this video reason number one you need to know about trademark infringement because if you ever encounter it in other words if somebody sends you a letter letting you know that you have been trademark infringing you might not even know it you didn't know that you were using a slogan or a business name that is already in use by somebody else moreover that business name or slogan or tagline might not even be the exact same one as the one you're using and i'll tell you a little tip it's a little secret more often than not the name you are using is not going to be the exact same as the one that the trademark infringer is claiming you are infringing upon so in other words it might be similar to someone else's and they still might have the right to say that you are trademark infringing and so in those situations you might feel totally caught off guard you think to yourself but mine is so different mine is not the exact same i do not even sell the exact same products well let me tell you there's a lot of gray area when it comes to trademark infringement and i mean gray area in the mind of the consumer so if you're someone that sells on amazon then it's very important for you to know how you're going to approach this situation what am i going to do am i going to respond to this person first am i going to reach out to an attorney first so that is reason number one and i want to address that very question that i left you hanging with right now should you respond to the trademark phone call that lets you know you're infringing should you respond to the letter that tells you you are trademark infringing or should you reach out to an attorney first and my suggestion is always this if you feel you are really in a predicament and you might dig yourself a deeper hole by responding to that letter or to that phone call then i suggest that you reach out to an attorney first you see the information that you provide either on a phone call or through an email or through a letter through any means of communication can be used against you later now that sounds so cliche right it sounds some like something a typical lawyer would say anything you say can and will be used against you but that is the truth so you want to make sure that you are saying and providing information that is accurate and that won't later be used against you so sometimes you have to be careful of how you word things there are different ways to explain facts so you want to make sure that you aren't going to get yourself into any kind of trouble by responding in your choice of words so that's what an attorney is there for to kind of make sure that you're responding in such a way that you aren't digging a deeper hole for yourself now reason number three if you are made aware that you are trademark infringing it might not always be in the form of a phone call or a letter or an email and i'll tell you if you are in the trademark application process there is something called a notice of opposition now a notice of opposition is a formal filing typically by a lawyer through the trademark trial and appeal board that basically tells the trademark trial and appeal board hey i want to put a stop to this person's application for such and such reasons one of those reasons could be trademark infringement so it might not always be in the form of an email or a phone call it's going to come in a circumstance which might not be that familiar to you everybody familiarizes themselves with emails and with phone calls so you know that could be expected but when it comes in the form of a notice of opposition through you know the trademark process or through your trademark journey then it might really throw you off guard i don't want that to set you back so if you're interested in finding out why you received a notice of opposition or if you're interested in being defended against a notice of opposition then make sure that you click down below you have to scroll down into the description so use your mouse keep scrolling until you find the information that you need to be able to contact me remember it's free to send an email so i just want to remind you that responding to a trademark infringement can sometimes be as easy as responding to a phone call and working it out with the other side and if you're somebody who prefers to do all of this in email that is good because it's always great to formalize communications in such a way that you can refer back to them later but i'm not so sure that i would recommend that you should respond on your own with your own words in your own language using your you know using however you would personally respond because that could get you in trouble later now again to recap you could also be receiving a trademark infringement notice through a notice of opposition now i want to give you an example of some of the clients that i've helped without telling you all of the details but what i can say is what i have said already and that is that most of the time you're not going to be contacted by somebody who has the exact same name as the one you're trying to use more often than not it's going to be someone who's using a similar name and so that's also going to throw you off guard so trademark infringement is all about understanding these nuances right um because it is common to get phone calls that say but how how could they be uh telling me that i'm infringing why would i receive a c synthesis letter if mine is different than theirs my spelling the spelling of my name the spelling of my slogan or tagline is different maybe it's different by just a couple of letters maybe it's different by just a couple of words but nonetheless uh consumer confusion in the marketplace is what ultimately drives attorneys to send that cease and desist letter or to oppose someone's trademark so it's really important that if you want to understand what is actually going on that you hire an attorney
Thanks for your comment Lisette Blauser, have a nice day.
- Hayden Trelles, Staff Member
hi everybody welcome back to sunshine's open candle company today's video is a very off-brand video for me but after much thinking i thought that sharing my experience and my story about something that recently happened would be very beneficial for small businesses or anybody like you and me so i took a little informal poll on my patreon campaign last week and asked them if they wanted to hear about this story and the response was an overwhelming yes before we get started i just wanted to let you know that i'm not very good at video blogging um my strength lies in the video tutorials that i share with you every week so i apologize if this seems a little disjointed i've taken some notes and i'm going to do my best to explain my story and i also just wanted to let you know that i am no expert in the area that i'm going to be talking about i'm simply just sharing my experience with you so that you can maybe learn something from what happened so a few months ago i received what's called a trademark infringement letter from an attorney in another state i'm in the state of california and this came from out of state from an attorney's office and i was super confused when i received it so i wanted to just go over a few things before i talk about the letter i wanted to just give you the official definition of what a trademark is because i was under a different impression before i received this letter and going through this process has taught me a lot so basically a trademark can be basically anything it can be any word phrase symbol design or a combination of these things that identifies your goods or services it's how customers recognize you in the marketplace and distinguish you from your competitors so this is all according to the united states patent and trademark office which has been a very useful website for me so i'll go ahead and link that website in the description box below so you can take a look at it and basically the trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and or services in a manner that is likely to cause confusion deception or mistake about the source of the goods and or services so the trademark infringement itself had to do with my use of a two word phrase on an under eye cream night cream in layman's terms my use of the two word phrase basically can cause consumer confusion so somebody's going to buy it online they might confuse my product with this other product and accidentally buy mine and also it tarnishes my use of the two word phrase tarnishes his clients trademark so immediately after getting the letter i looked up this other company to see what the product was and then i got even more confused because i felt like there was no way i could be causing customer or consumer confusion or tarnishing the trademark with my use of the of the two word phrase however when you look at the actual trademark which is the next thing that i did there is a little piece under the trademark it encompasses a whole paragraph of of items but there was a little piece in their trademark that talks about skin care preparations and also see if i have it preparations and substances for the treatment of damaged skin and tissue so even though our products are completely different that too little line phrase in their trademark of what it encompasses i think is why they thought that there could have been some sort of customer confusion or consumer confusion even though our products are nothing alike they don't look alike they're not even named the same thing it really is just that two-word phrase that they have a trademark on so after reading that i thought well maybe i'll just go ahead and and reach out to this attorney and just let them know hey no no problem i'll change the name i'll rebrand everything i'm not married to the name no big deal i had no idea that i was infringing on anybody's trademark and then the more i read the letter the more i thought you know what i really feel like i need some help with this i don't think i can handle this on my own and they did ask me to cease and desist which i had no problem doing but there was something in the letter that just the more i read it the more i thought i probably should retain an attorney and seek some advice on this and i think it had something to do with they were basically saying that they were leaving their client an option to license to sell me a license for using the name and that is something that i just didn't want to do when i was super confused by it so i went ahead and i interviewed several attorneys in my area specifically trademark attorneys and we went ahead and we retained a trademark attorney which ended up being a very very good idea so after hiring the attorney he did a bunch of investigating for me and looked into this other company and looked into any prior trademark infringements or lawsuits or anything that they may have had already and basically came back to me and said you know i don't think that there really is any consumer confusion here however it just kind of validated he validated what i said a little bit ago regarding the skin care preparations part of their of their trademark and the damaged skin tissue part of their trademark and he basically said you know because this is in here under their trademark they do they do and can come after you for this so really it was kind of a matter of where i wanted to go with it and what i wanted to do and i had a couple options as far as this was concerned but the first thing that my attorney did was just reach out to the other attorney and he basically said hey um my my client is is willing to just let go of this and rebrand this and not use the name anymore and basically kind of indicated to them you know how much money i i've made on the product and and that sort of thing and there was a series of negotiations that happened after that so basically based on the response of the other attorney and the other client after my attorney's initial contact with them i started to really understand and know that i wasn't going to be getting out of the situation without some sort of payment so this took this took several months to to resolve but basically that initial contact was made and then the other um attorney came back it took a long time to get to this point weeks to get to this point but the other attorney came back and basically they wanted to sell me a license which i told you earlier in the video that that was not something that i wanted to do i didn't want to purchase a license for it but basically because the mark their trademark was not a contestable trademark they wanted to negotiate with me to resolve the matter and by negotiating they wanted me to either turn over all my sales my numbers of everything that i've made on the product and and or they wanted to resolve the issue with me paying them a lump sum of money um which was a lot and they also wanted me to let me read it to you they wanted me to pay this lump sum of money for the infringement of the clients incontestable mark for the past years and a five percent licensing fee on all future sales
Thanks faltbarW your participation is very much appreciated
- Hayden Trelles
About the author
I've studied histochemistry at University of Wisconsin-Parkside in Kenosha and I am an expert in quantum mechanics. I usually feel satisfied. My previous job was photo-optics technician I held this position for 13 years, I love talking about perfume and hula hooping. Huge fan of Woody Harrelson I practice cycling: bmx) and collect artist trading cards.
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