Forums: Discussions for entrepreneurs and small business.

Hi folks.  I started a company called The Cozy Cookie Company and sell gourmet cookies online with the domain name www.cozycookies.com.  I had a logo designed with the phrase "CozyCookies.com" that I display on my website and on my cookie packaging and on my brochures.  After I spent a fair sum on my venture I found out there is a company called Edson Wright selling a toy called a "Cozycookie."  The have a registered trademark for "CozyCookie."  They also have a website and the domain name differs from mine by only a single letter: www.cozycookie.com.  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.

It is likely that since you know about them, they know about you!  This could be a good marketing opportunity for both of you (and you can clear up the confusion).  Maybe you should have links to each other on your sites.

This would clear up any confusion each customer could have and you two would make for great allies.

I would suggest some investigative research into this when you’re ready, though the cat maybe out of the bag.  Since you’ve made this posting you’re increasing the likelihood that they’ll find you/contact first.

Here’s what I’d plan.  Get a friend to call you and then have them conference in the other CC company.  This way you’ve kept private you phone number (less tracking).  Try to get one of the owners on the phone (since this is a small company you may get lucky).  Explain to them that you wanted to get more information on their company, but when you did the Google search you came across another CC company.  I think you’ll be able to gauge their response.

Hopefully their response is of a positive nature and you can make an introductory call soon after with the your linking offer.  Please keep us up-to-date on your situation.

Good luck!

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?

That said, if you get your own trademark the USPTO is granting you the right to go on using the name. Therefor you would not be liable.

Jennifer:

The sixth circuit [where I practice law the most] uses the following factors to determine such questions:

1) strength of mark;

2) similarity between the marks;

3) relatedness of goods;

4) marketing channels used;

5) likely degree of purchaser care;

6) defendant’s intent in selecting the mark;

7) evidence of actual confusion; and

8) likelihood of expansion of product line.

Notice that what the USPTO thinks is not listed.  The USPTO has no legal jurisdiction in this type of question.  In posting this, I ain`t just cutting and pasting something I found from the internet that I think might be entertaining to take up space.  There are a few people on this list that think nothing of throwing out a trial balloon of legal advice with no thought.  Be careful out there.