Trademark dispute with a giant company, should I just give in or fight?

[Meganlin]

Hi everyone! I am currently in a very frustrating situation and sincerely hope someone could give me some advices.

To avoid legal issue, I can not list the name of the company which I am having a trademark dispute with.

I started running my yoga products business since January. It was not easy to start. My products use eco-friendly materials and are more costly when manufactured. Consumers tend to buy cheaper products regardless of whether they are eco-friendly. There were not many sales in the first few months. I have invested a lot in advertising and spent a lot of time on social medias promoting the concept of eco-friendly yoga products. From this October, I started to see the result of my work; sales start to pick up and my brand has got much more recognition.

Seeing my business start to grow encourages me to work harder. In order to protect my brand, I applied to register my trademark via USPTO. While USPTO has approved the filing and published it, one of the biggest television network says no to our application. The company's lawyer told me that the company doesn't allow anyone to use "and the city" and wants me to change my brand name to avoid litigation. The reason the company gave is that they have a tv show with a name including that string of words.

I checked trademark database and found that most applications for brands including that string of words have been canceled. I guess those applicants (spa owner, grocery store owner,...) might have received calls from the lawyer of the big company.

I talked to a lawyer friend, and he told me that the tv network doesn't necessary have very solid arguments because tv shows and yoga products belong to two completely different trademark categories. However, a big company like that affords to hire lawyers and have a years-long case, while small business owner like me can hardly afford that.

Can someone please give me some advices? I wonder if small business can do something to defend ourselves even when it looks like a mission impossible.

Thank you so much in advance!

[Harold Mansfield]

Just off the top of my head there's a show called Caroline in the City, and a show called Sex in the City and they are from 2 different producers and production companies.
There's a Joe Walsh song called "in the city" and various organizations, events who use those exact words including:

Child in the City
Christ in the City
The Jam- In the City
..you get the picture.

I'm speaking strictly as a person who would probably fight it because I hate when people try to BS me, they said "We don't allow anyone...". They didn't say they had any legal right to stop anyone or that they owned that phrase 100%.


Just from what you said, and judging by the kinds of organizations that they seemingly HAVE NOT bothered, it sounds like they try and stop people from using the phrase and only mess with people who don't have the resources or education to dispute it, but have no legal right to prevent anyone from actually using it.

I'd ask them what legal right they have to the phrase and ask for proof.
Expect the next move to be an attempt at intimidation, or a copy of some legal protection for a specific name that includes those words, not protection of those words alone, and expect you not to see the difference.

Bottom line, until you see proof otherwise, assume they are full of crap. If they aren't it should be easy enough to prove in about 10 minutes without a lot of back and forth.

[BizAdvisor]

I tell clients this time and time again... Trademark isn't necessarily about protecting a "name", but rather for protecting a "brand". Because of this, there really isn't a reason why a tv show or movie would even register a title unless they have a strong brand behind it that is a high risk for infringement; such as "STAR WARS".

As for "... In The City"? Best of luck to them. They'll have the burden of providing proof that you were actually trying to exploit... NOT their name, but their "BRAND"... Which is definitely not an easy task!

[nealrm]

Like was stated before they have to prove you are exploiting their brand. However, I don't think that is the issue. Given the phrase you mention I suspect the company you are referring to is a cable media company that uses three initials that begin with the letter H. So the issue is not so much that they have deep pockets (which they do) but that they have salaried lawyers on staff. So outside of some minor filling charges, they don't have any additional expenses to taking this to court.

You need to sit down and talk this over with a lawyer. Determine the costs that will be required to win this case and make a decision if a trademark that is less than a year old is worth protecting. What are the benefits of keeping this trademark? Would you pay the equivalent to purchase this trademark as you will spend in legal fees.

If your company is separate from your personal property (LLC, incorporated ...), you may try calling their bluff. You don't have much in profits at this point, so there is not much they could get if they won. You would declare the original company bankrupt and start marketing the products under a new name and company. I suspect that you would win the case but that they would keep appealing. So shoot for getting the case dismissed with prejudice.

In the end, this is a cost / benefit analysis. So anything posted in a forum is worth exactly what you paid for it. (Including my comments)

[Meganlin]

Thanks very much nealrm for the very insightful advice. I totally agree that it is a matter of cost / benefit. I will consult with a lawyer and see if it is worth it.

I will also need to calculate how much changing brand name will cost me. I have inventories with my logo on them and all the marketing materials (brochures, posters, cards, gifts...) with my brand name. The lawyer of the company said "the Company is not going to shut your business down or ask you to burn all your inventories, but will give you a couple of months for the transition". Changing the name is feasible, just having to do that is something hard to swallow.

Thank you again. I will let you know how it goes.

[Meganlin]

Thanks Harold for your advices! I will definitely ask them to provide proof of exclusive right to use that phrase. Last time when the lawyers called me, I asked them about it. And the lawyers simply told me they didn't want to argue. They told me the Company doesn't want to SHUT MY BUSINESS DOWN as long as I do what they ask.

I really want to fight it, but the main concern is the legal costs. I haven't found any small business organisations that can offer some help or protection to small business owners, but I will keep looking.

Thank you again. I will let you know how things go.

[Harold Mansfield]

Thanks Harold for your advices! I will definitely ask them to provide proof of exclusive right to use that phrase. Last time when the lawyers called me, I asked them about it. And the lawyers simply told me they didn't want to argue. They told me the Company doesn't want to SHUT MY BUSINESS DOWN as long as I do what they ask.



Classic response. All they had to do was prove it. Done. Instead they changed the subject and tried to intimidate and fluster you. I'm not the kind of guy that just accepts "Because we said" so. I'm the kind of guy that asks you to prove what you're saying. If they have the proof they would have done that. It's looking more and more like they don't.

I'm not a lawyer so don't base your decision on what I'm saying. However, in the past when I or my clients have received such emails we simply asked for proof that they own the image, and they sent it. Done. Over.

Threatening to "shut your business down" simply because you asked for proof is nothing but a strong arm tactic.
When it's been said to me in the past I copied the email, sent it to both mine and their local DA's as the threat that it was, and I never heard from the guy again. And he was a lawyer.


Anyone can send anyone else an email and claim anything they want. Asking for proof of their claim should not make honest people agitated. Just tell them you're more than happy to comply, just prove what they're saying. Why is that an argument?

JMO of course.

[Fulcrum]

I would think that if they had valid proof, a cease-and-desist letter would have been issued.

I'm also going to recommend that if you are speaking with the other party that you record everything.

[nealrm]

It's pretty clear they are planning on using strong arm tactics and that they don't have a winning argument. But, when a 600 lb gorilla decides to use strong arm tactics, you better take notice. If you are going to fight this, you will only win by using brains not brawn.

Unfortunately, there is nothing illegal about what they are doing. Even implying they could shut down your business is not illegal. So sending emails to the DA is both a wait of your time and the DA's.

[Fulcrum]

Unfortunately, there is nothing illegal about what they are doing. Even implying they could shut down your business is not illegal. So sending emails to the DA is both a wait of your time and the DA's.

Neither is going public with what they are doing, providing there is actual evidence backing up what is said to avoid libel.