Received "Cease & Desist" Letter

[CarolSnow]

What is the name of your state?What is the name of your state? New Jersey

I don't want to indicate the actual company names here, but here is the scenario: We are a small "mom and pop" business that has themed our entire product line after the State of New Jersey. Recently, we introduced a new product that is similarily named to the same product manufactured by a MUCH larger company. If our product were called Jersey Twists, theirs is Flavor Twists. The shapes of the products are completely different....ours is in the shape of New Jersey, theirs is round. Both products have a score through their center. We only recently registered with the USPTO (it's pending approval), they in 2002.

Today we received a Fed-Ex delivery from an Attorneys office, while it doesn't actually read "Cease and Desist"....it's one in the same. They have given us (2) weeks to refrain from the use of the "Twists" portion of our product name, as well as withdrawal our trademark application for Jersey Twists.

WE do not believe we have infringed on their rights. While the products are categorically the same...they are visually 100% different.

Any insight you can offer to this matter will be greatly appreciated.

Thank you,

 

[MetaJeffB]

Ok... I am not a lawyer, but...

Usually in the issuance of a registered trademark there are discalimers. For example, there a a trademark for "Think Big". But, their registration says "No claim is made to the exclusive right to use the word 'Big', apart from the mark as shown."

Based on that, I would find it surprising if the USPTO would grant a trademark that would allow them exclusive use of a particular, non-original word as part of their product name. If your "Twist" example is accurate, it would seem to fall into this same category.

I have had a similar situation as you are experiencing. I contacted my insurance company through which I have business liability insurance. After just a bit of research on their part, it was determined that I had insurance coverage to defend my business on the matter. I suggest you see if your insurance company will take this matter on for you also.

Good luck!

 

[divgradcurl]

Recently, we introduced a new product that is similarily named to the same product manufactured by a MUCH larger company. If our product were called Jersey Twists, theirs is Flavor Twists.

In addition to the addvice given by MetaJeffB, it appears that a strong argument could be made that you named your new product similarly to the "same product" manufactured by the "MUCH larger company" in order to take advantage of a consumer's familiarity the the MUCH larger company's products. If you use a name or logo that is "confusingly similar" to another company's trademark, you could be liable for infringement -- and it could be considered "willful" infringement if you knowingly created the "confusingly similar" name in order to take advantage of the other company's "good will."

MetaJeffB wrote,

I would find it surprising if the USPTO would grant a trademark that would allow them exclusive use of a particular, non-original word as part of their product name.

As would I. However, the situation here is not preventing the "exclusive use" of the word "twists" -- presumably, nearly anyone could call their product "twists" without running afoul of trademark laws -- but here, it appears that the two businesses are in the same line of business -- candy, the OP's company produced a product that apparently is the same as the other company's product except for the shape (but with other design elements that are identical, the "score through the center"), and the name is very similar as well -- instead of "flavor twists" its "jersey twists." That raises some red flags, because the courts can be pretty unmerciful if they decide that you infringed on the other's trademark "willfully" in an attempt to use their goodwill and confuse their customers into buying the OP's products.

Now, none of this means this is a lost cause -- it does mean that you will want to talk with a local attorney who has experience in trademarks, and who can review ALL of the facts. Based on the information you've given, it sounds as if the MUCH larger company might have a pretty good complaint -- don't ignore this letter, see an attorney sooner rather than later.

 

[CarolSnow]

Thank you for your responses. Since we have only recently begun to use the Jersey Twists name, we've decided it won't be difficult for us to select another name for our product....Jersey "something". I guess that leaves us with one last question. As indicated above, the MUCH larger company not only wants us us to refrain from using the "Twists" portion of the product name, but also to withdrawal our trademark application for Jersey "Twists". Is it standard practice for them to make the "withdrawal" request?

 

[divgradcurl]

Thank you for your responses. Since we have only recently begun to use the Jersey Twists name, we've decided it won't be difficult for us to select another name for our product....Jersey "something". I guess that leaves us with one last question. As indicated above, the MUCH larger company not only wants us us to refrain from using the "Twists" portion of the product name, but also to withdrawal our trademark application for Jersey "Twists". Is it standard practice for them to make the "withdrawal" request?

I don't know if it is "standard" or not, but if you are going to comply with the rest of their requests, why not that one as well? Even if the application goes through, you have to use the mark in commerce for a period of time before the registration is complete anyway -- so if you aren't going to use the name, you can never fully obtain all of the registration rights anyway, so its not like it will be a big loss to give it up.

Beyond that, when did you file for the mark? Have you received any office actions from the trademark office yet? I guess I would be kind of suprised in the trademark office would allow the mark to go to the principal register anyway, based on the "likelihood of confusion" discussed earlier.

 

[CarolSnow]

Beyond that, when did you file for the mark?

We filed for the mark on 3/4/05...and have yet to receive any type of correspondence from the USPTO (aside for their inital confirmation). Our concern about withdrawaling our application is leaving the mark available (or vulnerable) for the MUCH larger company to turn around and use, if not by another company (we do not have the resourses to engage in a legal battle at this point in time.)

When we search the USPTO database for different marks....it's incredible how many are SO similar for the same product. Here's just one tiny example: wax melts, ez melts, aroma melts....all for fragrant wax. We never considered there would be a problem with Jersey Twists, simply because Flavor Twists existed.

Thank you again....your expertise is much appreciated!

 

[CarolSnow]

Just as added information....aside for the MUCH larger company, we are the only other application with "Twists" for our product type. If we withdrawal our application...the MUCH larger company will have easy passage to getting a trademark on "Twists" by itself....eliminating the "melts" situation from ever happening to them.

 

[divgradcurl]

Just as added information....aside for the MUCH larger company, we are the only other application with "Twists" for our product type. If we withdrawal our application...the MUCH larger company will have easy passage to getting a trademark on "Twists" by itself....eliminating the "melts" situation from ever happening to them.

Why do you think that would happen? It's pretty tough to get a standard character mark -- which is what you are talking about -- in any event, and much more difficult when the word is a generic word. I would suspect that it would be darn near impossible to obtain a standard character mark on the word "Twists" by itself.

In any event, if you can't use the term "Jersey Twists" in commerce anyway, like I said, you are not going to be able to obtain a registration, and won't be able to protect the name -- and even if somehow you got a registration, if you weren't using it in commerce, you would lose the trademark eventually anyway.

Forget about "twists" -- figure out what you do want to name your candy, and trademark that -- that's probably the best way to go about things.

 

[divgradcurl]

We never considered there would be a problem with Jersey Twists, simply because Flavor Twists existed.

The reason why I thought you might have trouble was twofold -- first, because you yourself admitted that the product was very similar to the original trademarked product (which raises the specter of willful infringement) and second, because you are clearly dealing with a company that is willing and able to enforce its mark.

The "melts" situation may or may not be analagous to your situation -- how different are the individual products? Are the marketed to the same set of consumers? "Jersey twists" may, in fact, be a fine name for a candy that does NOT resemble the "flavor twists" -- but you did note that your candy was very similar, so that's not the issue here.

From a practical standpoint, however, whether or not "Jesey twists" is infringing on "flavor twists" is really irrelevant -- unless you are willing and able to defend yourself, in court, the simple fact of the matter is that the bigger company may be able to push you around a bit, and effectively "extend" the reach of his trademark, simply because you are unable to really defend yourself. That's not fair, and it's probably not legal, but unless you are willing to hire a lawyer and defend yourself, that's the realistic outcome here.

Pick a name that isn't similar to any big guy's trademarks, and market away.