2

From what I understand about trademarks, the mark that has seniority (was used first in commerce) to identify a good, is the mark that has the legal trademark rights to use that mark. There is also another scenario regarding trademark dilution, where a trademark can get so famous that anyone using it for anything can be claimed as trademark infringement (like "Coca-Cola".

How would this play out in this scenario:

A small business, Company A, started using a trademark name, "YummyDonuts" for their business and then a year later another company, Company B, started using the same name for a similar business. Company A doesn't have a lot of money so they cannot sue Company B for trademark infringement. However, Company B does have a lot of money from outside investment and they spend an enormous amount of it on advertising their product. In the eyes of customers, they only see Company B, because Company A just doesn't have the same exposure. Over time, Company B becomes "famous" and the de-facto company that comes to peoples minds when they think of the trademark name "YummyDonuts."

Years later, Company A decides to sue Company B for trademark infringement. But at this point Company B has a "famous" trademark.

Can company B claim (and win) that it is actually Company A who is infringing and "diluting" their now famous mark? Or is there an order of precedence that takes place?

Some additional details: Company A is aware of Company B's infringement and Company A sends Company B a cease and desist. Company B ignores the cease and desist or responds by saying that they don't think they are infringing on anything. Over the years, Company A continues to send cease and desists but Company B just keeps on ignoring them. Company A is a smaller, maybe mom-and-pop shop that cannot afford to sue Company B.

This is in the United States.

2
  • When B starts using the name "a year later", is it aware of A using it?
    – Greendrake
    Commented Feb 13 at 23:43
  • @Greendrake Company B claims it wasn't aware of A using it, but nevertheless, Company B responds by saying it doesn't believe there is any trademark infringement (even though it's obvious there is). Also, see my new edits to OP.
    – MaxSped
    Commented Feb 14 at 0:16

1 Answer 1

1

Yes

By failing to protect their trademark, Company A lost it. This is because trademarks are only valid if they are used and defended.

As soon as an infringement is notorious enough that the trademark owner should have known of it, they must protect their rights or they will be acquiescing to the use by the other party. If Company B’s use becomes so dominant that it reduces Company A to the minor player, they can apply to have A’s registration removed an apply for their own.

Now you know why Disney is so intolerant of trademark infringement.

4
  • 1
    Acquiescing requires lack of malice aforethought. What makes you think company B lacks it?
    – Greendrake
    Commented Feb 13 at 23:47
  • I should have made it clearer in my example, but what if Company A is a small business (maybe a mom and pop shop) and all they can do is send a cease and desist to Company B but Company B just ignores it? Over the years Company A continues to do business and continues to send Company B cease and desists but Company B just keeps on ignoring them and marketing their product until Company B is the dominant brand in the eyes of consumers? Are you saying the law requires Company A to actually sue Company B in order to keep their trademark rights?
    – MaxSped
    Commented Feb 14 at 0:11
  • @MaxSped generally yes, you need to sue within a reasonable timeframe or you lose your right to enforce your trademark.
    – Dale M
    Commented Feb 14 at 9:17
  • Example: there used to be a company called G-Mail in Germany which provided document delivery services (in the physical world). They planned to expand into digital documents, so they registered the trademark G-Mail for electronic mail as well. As a result, Gmail was known in Germany as Google Mail and used the domain googlemail.com. However, G-Mail never got their electronic document services off the ground and thus lost their trademark, so Google Mail rebranded as Gmail in Germany. Commented Feb 14 at 17:16

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .