Starting photo business need advice on trademarks

[Nimbi]

Hi there I have been helping my wife start her photography business and for the sake of this discussion it is called "Violet Photo". Unfortunately after doing some research I'm worrying that we may be infringing on a major photo company by the name of "Violet Studios". Now they are not registered with the federal database and there are no photo companies with similar names to ours listed.

We are a very small one person company that focuses on portraits and such where as they do major product lines. Also we do not operate in the same states that they do. Are we safe to continue or should we change our name. The reason I ask is because I have a website ready to launch and business cards and contracts printed with the name on them already.

Very much wishing I had researched this earlier.

[JSonnabend]

Your question is one of the most difficult to answer.  Because the senior user (the other company) is not registered, its trademark rights extend only as far as its geographic use.  Determining exactly that extent, though, is difficult, especially in the internet age.

Your best course of action depends in large part on your risk aversion.  You can do anything from move ahead with your mark, to contacting the senior user to ask permission ("consent"), to change your name.

You can also speak directly to a qualified TM attorney who likely will be able to give you better guidance based not on hypotheticals but on your real-world situation.

- Jeff

[klaviernista]

I'm a patent guy, but I do know that Trademark infringement is based on whether there is a likelihood of confusion as to the source of goods and/or services.  Thus, the question in your case is whether or not it is likely that a reasonable person would confuse the source of goods and/or services associated with "Violet Studios" with those associated with "Violet Photo."  Any number of factors can come into play, including the sensitivity of the market to minor fluctuations in the name of a word mark.  E.g., the U.S. populace generally associates the source of goods associated with the term/mark "iphone" to the Apple corporation.  However, it is arguable that the population would not confuse goods associated with arguably similar marks, such as "guyphone," or "myphone,"  with Apple, due to the sensitivity of the market to small changes in that particular type of mark (note, myphone is currently used by microsoft in connection with phone services).

Risk tolerance is a huge factor here, as Jsonnabend mentioned.  To minimize any risk of infringement, you could change your name to something completely novel, such as @#!!$@ photos, but that name may have little or no market value as a trademark.   Alternatively, you could take steps to lower your risk by taking the actions mentioned by Jsonnabend (e.g., request Violet Studios for permission (in writing) to use your name, Violet Photo, in commerce and associated with the goods and services your wife's company provides).  Of course, you could also simply move forward with using the mark, bearing in mind the risks involved with doing so.

As mentioned above, however, I am not a trademark attorney.  So rely on the above at your own risk, and contact a qualified TM attorney for more certain guidance.   

[JSonnabend]

Klaviernista's reply is correct.  My post assumed likelihood of confusion and focused on geographic limitations of the senior party's rights.  Even where two marks are confusingly similar (or even identical), two different parties may use them concurrently where rights are limited to non-overlapping geographic markets.

- Jeff

[Nimbi]

Thanks guys I really appreciate the advice and clarification. Due to my lack of money a lawyer is out of the picture but I am going to try to ask permission and hope that they do not see us as a threat to their business. Is there a recommended way to word the letter (i.e. is the letter basically a legal document) and should it be mailed or is an email fine?

[Lyza]

I am not a lawyer but have been working with them for almost a quarter century.  Unfortunately, there are many situations wherein refusing to consider hiring an attorney will cost you your business in addition to your use of a trademark. 

Consider this.  You presume that you cannot afford an attorney without contacting one.  How much is too much?  $50-100, $200, $500, etc.?  This is a time when many attorneys are looking for clients and will be competitive in their fees.  Trademark rights are not a simple matter and to contact the Other Party ("OP") without understanding how to prepare your request might cost you the use of your preferred mark when an attorney could have prevented that outcome. 

Also consider that although you say you cannot afford qualified legal advice, you follow-up by asking for free legal help in preparing your letter.  You are correct that there is a right way and a wrong way to contact the OP, but that is what you would pay counsel to do.  I'm not trying to be harsh nor should you take this as a nasty response.  I'm just trying to help you understand that you've already received a mighty amount of free legal help from 3 excellent lawyers.  For more than what you've received here, however, you should speak to at least one of them or another lawyer and find out what this type of assistance would actually cost.  What do you have to lose? 

Remember the old adage, "The lawyer who represents himself has a fool for a client."  It is even more relevant for civilians.  Good luck.

[vman11]

It's pretty simple this trademark stuff (at least till the point you've got to go to court). If you think it's obvious there may be a confusion between your name and this large company name, then there probably is a likelihood of confusion. Not much else a attorney may be able to tell. Yeah, there's all this stuff about how far the senior party's (geographically) rights extend and stuff. Just keep monitoring the trademark database whether they've filed any applications. If you get a cease and desist letter, approach an attorney. My free advise, do what you need to (your business) till you get this letter/ call. Hope that you run out of all your stationery by then and lay a foundation for renaming you business (apply for registration of a new name for your business on intent to use, search the trademark database of obvious conflicts).

You'll save a bunch of money this way and for about an hour's worth of an attorney's time (who will in all eventuality probably scare you with all kinds of doomsday scenarios, and have you file a registration on this and/ or new name anyways after many hours of deliberation) you'll have kicked off registration of a new service mark.Yes you can file a service mark registration if you have basic computer skills on your own and can follow simple instructions in the English language.

[Kaitlin]

It's pretty simple this trademark stuff (at least till the point you've got to go to court).

Anything looks simple to the uninitiated.  You don't need an attorney to draw up a contract, and you will find people who've created their own tell you it's easy to do yourself -- because it just so happened that everything went fine between them and the other party and so they've never had to put that contract to the test to see how it would hold up to resolve a dispute.

It's when you find out you're $100K in the hole for problems that could have been avoided by proper language and clarification at the outset (because it was drafted or at least reviewed by someone who knew what the potential pitfalls were) that hiring counsel finally begins to look advisable.

Lyza's advice is dead on. 

[vman11]

Anything looks simple to the uninitiated.  You don't need an attorney to draw up a contract, and you will find people who've created their own tell you it's easy to do yourself -- because it just so happened that everything went fine between them and the other party and so they've never had to put that contract to the test to see how it would hold up to resolve a dispute.

Well this was assuming the OP files a service mark for a new name. I see no reason whatsoever for sticking to a particular name unless there is established goodwill. In this case there seems to be a matter of new stationery.

The problem statement seems quite simple to me, I believe it's been contorted out of proportion. I personally see no need to contact this larger company to get a contract signed. Can anybody explain why one would do that? You're just flagging yourself in my opinion, now they will file a federal registration application before you have the time to switch names of the business, or you pay them money to use the name + pay attorneys to draft a contract to pay them money. Yes, if a letter is being sent and a contract being signed, it would be foolish to not have legal counsel.

If the OP insists on sticking to the name in the long run, yeah, sooner or later you'll have to resolve this with the larger corporation. If the OP is willing to transition to a new name for the business, I feel a great amount headache and money can be saved.

FYI, filing and getting federal trademark / service mark registration is a piece of cake.

[Kaitlin]

Well this was assuming the OP files a service mark for a new name.

While it's possible to just choose a new name and run with it without the benefit of counsel, from my prior practice and from the postings I see in these fora, it's a mistake to presume that it's a common sense determination whether any given choice of mark is a good one and whether or not it runs a risk of infringing an existing one.  Although there are lay people who "get" the concept of "likelihood of confusion" correctly (and may even intuitively grasp the need to avoid descriptive marks and not use generics), there are plenty who would not. 

Of course, following the application process itself need not require vast stores of legal knowledge.  But an understanding of how trademark law works is important to choosing a good mark (and using it correctly so you don't lose rights later). 

To presume a lay person who has not had any dealings with trademark law will intuitively understand the likelihood of confusion standard and automatically grasp what may or may not be considered to be infringing is rather optimistic.  Many do not even realize that common law trademark rights exist and presume that they will be clear to use their proposed mark if they don't find the same mark as theirs registered.  Or they may think that a mark is unavailable because a similar one is already in use -- even if in a completely separate channel of trade.  An individual with attention to detail who would never confuse "the pancake house" with "a pancake house" or "le chateau" with "the castle", or "cadillac" with "kadilac", might very well conclude that none of these pairings -- which are actually considered to be identical -- even pose a danger of likelihood of confusion.

Without a background in what has been found by the PTO and courts to evidence likelihood of confusion, many lay people, intelligent though they may be, are nevertheless completely at sea in confronting the standard.     

An understanding of human buying psychology, as seen through the eyes of the courts, is necessary to get a proper grasp of the standard. 

[vman11]

Kaitlin, I understand the economy is tough and the legal profession has been one of the hardest hit, but let's be forthright. The PTO has done a fantastic job of putting together FAQs for people exactly in the OPs situation. I continue to insist that reading the FAQs, searching the database for registered marks and an internet search to identify potential conflicts is sufficient legwork to obtain a registration. The PTO does a pretty damn good job in OAs anyways in terms of guidance and what to do next. The 'lay person' ofcourse would need to commit to investing the time to read and follow the instructions provided.

In my humble opinion counsel makes sense in the following situations:
Multiple owners / ownerships issues

Tight trademark space, loads of similar businesses in chanels which may potentially cause confusion in a situation where the applicant has developed brand recognition already, goodwill and/ or invested considerably in such a mark

Complications, OA one maynot understand

But, then again there are services out there that'll file a mark for quite a bit less than a grand and at that point it may make more monetary sense for an entreprenuer to get it done professionally.

[JSonnabend]

Vman11, your advice is so off base it's hard to know where to start. 

I'll start here: using an infringing mark can lead to a lawsuit.  It usually doesn't make sense to start such a lawsuit, so the OP may be ok, but sometimes companies take that step anyway.  I know because I've helped more than one client who's gotten sued in this type of scenario.

Second, you could use one of these "other" trademark prep services, but they aren't professionals in any meaningful sense of the word.  They are self proclaimed "document preparation" services.  They don't (and can't) give legal advice, so they're really no better than doing it yourself.

Finally, I can't tell you how many times new clients have come to me with trademark applications they've tried to handle themselves but have screwed up.  Sometimes I can save the pending application, other times they have to start all over again, with the associated loss of priority.

You have lots of advice to give, but you never mention your credentials.  Care to share that with us so people can properly weigh your advice?

- Jeff

[vman11]

You have lots of advice to give, but you never mention your credentials.  Care to share that with us so people can properly weigh your advice?

I chose not to; I quite like the anonymity. Also, would like to add that my 'off the cuff' advise is based on my personal experiences with Patent and Trademark prosecution procedures'; I think that much would be apparent, this is an anonymous internet forum.

As stated above, it's MY opinion, not legal advise and shouldn't be construed as legal advice. The standard disclaimer most people see appropriate to add on to their posts.

I've missed how your conclusions in your posts regarding getting a cease and desist letter followed by infringement proceedings or any of the other issues you have raised in any way conflicts with the facts of my previous posts. In fact I do not see how you have shown in any substantial way how I am 'way off base'. It might be worthwhile discussing issues on this type of forum rather than advertising one's credentials, my two cents.

You assume that these "other" trademark services you refer to (or prep entities is a term you've introduced) were meant to be non-legally recognized entities. In the assumption of which you are incorrect, there are plenty of reasonably priced attorneys out there.

[JSonnabend]

"Non-legally recognized entities"?  What does that mean?  I said document prep companies (like LegalZoom, for example) don't give legal advice.

People come here asking legal questions that may substantially affect their businesses and therefore their lives.  If you want to remain anonymous, that's fine, but people should understand that you're giving "anonymous, off-the-cuff, I-am-not-an-attorney" advice on legal issues.  No one has any way of determining who you are and therefore whether or not your advice is sound (which in my professional opinion I believe is not).

This isn't a cooking forum.  Following bad but authoritative sounding advice won't lead to a ruined meal.  It could lead to a ruined business.

- Jeff

[vman11]

Listen Jeff, I'll end this right here, it's kinda getting cagey and I see that I'm stepping on the toes of attorneys trying to make a buck. In response to your post:

If you want to remain anonymous, that's fine, but people should understand that you're giving "anonymous, off-the-cuff, I-am-not-an-attorney" advice on legal issues.  No one has any way of determining who you are and therefore whether or not your advice is sound (which in my professional opinion I believe is not).

This isn't a cooking forum.

Duh

Lastly, you are a forum moderator. Stick to the issues, if you indeed think you are providing legal advice which people can swear by. Stop worrying about who's posting, worry about what's being posted. You have all the posts in this chain at your disposal, please feel free to systematically provide a logical rebuttal.

Stupid one liners like 'this isn't a cooking forum' isn't exactly useful legal advice.

Over and out.