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Sease and desist letter. Trademark harassment. Need help. Trademark

Discussion in 'Copyright, Trademark, Patent Law' started by IlyaM, Nov 26, 2018.

  1. IlyaM

    IlyaM Law Topic Starter New Member

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    Jurisdiction:
    New York
    Is it possible to find a free attorney to defend my small business from trademark harassment?
     
  2. adjusterjack

    adjusterjack Super Moderator

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    I doubt it. But all you can do is call around and ask.

    You got a cease and desist letter. Quote it to us word for word and you might get some helpful comments.
     
    IlyaM likes this.
  3. IlyaM

    IlyaM Law Topic Starter New Member

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    Thank you for your response. I’m trying to fix the orphographic mistake on the title but...
    Yes I received a cease and desist letter from the CEO of another company and there’s a whole bunch of letters going back and forth.
    Here’s the initial letter from them.
    5D6D9FC3-DE51-4EA5-ABD3-09F909D54DD5.jpeg 755A83AC-455D-41DF-BC21-B4B20A0A72F8.jpeg
     
  4. IlyaM

    IlyaM Law Topic Starter New Member

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    i Answered with following,


    Dear Mr. Feldman
    Upon receipt of your cease and desist letter, I would like to respond with the following information. This letter was my first exposure to Doughnuttery. However, I have since researched Doughnuttery online and found that there are several differences between our names and products which I would like to point out. Because of these differences, I do not believe we infringe upon your trademark.
    First, there is the difference of the name itself. Brooklyn Doughnutry is two words whereas Doughnuttery is only a single word. Furthermore, the second word in the name of my shop is not the same as yours, and these differences extend beyond the differences in the spelling. Doughnuttery implies that the proper pronunciation of the word is dough-nut-tery, however Doughnutry implies that the proper pronunciation is doughnut-try. My business name is not a trademark, and when I registered as a regular business, the state of New Yorked checked the availability of the name, which was not taken. Brooklyn Doughnutry does not resemble Doughnuttery in either name or appearance. Brooklyn Doughnutry uses a very bold font which is a generic Microsoft Word font available for everyone’s use, and appears different from the slim font used for Doughnuttery. Doughnuttery is presented with visuals including images of doughnuts and lines above and below the word with additional text, whereas Brooklyn Doughnutry only uses those two words without any additional text or aesthetics. Brooklyn Doughnutry and Doughnuttery operate in different territories, and with respect to this, the name Brooklyn Doughnutry places emphasis on the Brooklyn location of the shop, whereas Doughnuttery, which operates out of Manhattan, places no emphasis on the location.
    Our businesses do not offer the same services. My business produces and sells very large handmade doughnuts that come in a small variety of flavors, however it appears from the Doughnuttery website that Doughnuttery sells very small, machine produced doughnuts which come in a large variety of very unusual flavors. I also sell many non-doughnut products including a variety of baked goods. In addition, our restaurants differ aesthetically. I run a very small shop and my interior, exterior, and decor are very different from that of Doughnuttery.
    Despite the obvious differences in our names and services, I am open to discussing possible positive outcomes for this situation. I am a well known business locally, and as such, my name is not that important to me. However, it seems that your name is very important to you for your recognition. I am an amiable individual and would like to work with you rather than against you. There are already enough barriers to running a successful business in New York, and there is no one to help us if we don’t help each other. As a businessman in New York, I would like to help my fellow businessmen, and to that end, I would be willing to change the name of my shop for $5000 USD that you would pay me to cover expenses involved in changing the name and my inconvenience. I believe we can continue this conversation further to an end such that we are both satisfied.
    Sincerely,
    Ilya

    (personal information redacted to protect YOUR privacy)
    Site Moderator
     
  5. IlyaM

    IlyaM Law Topic Starter New Member

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    Then I received this,

    Dear Mr. Melemed,

    I thank you for your detailed response dated September 23, 2018. I have great respect for you as a fellow local business / doughnut man but respectfully despite the “differences” mentioned by you, there is clear infringement on the mark and I do have a legal opinion to this effect. I recommend if you haven't done so already, to consult with legal counsel to better understand the relevant analysis. All said, however, I am willing to contribute a total of $750 toward you changing the name and all branding if accomplished within 3 months. The amount would be payable $375 upon a letter agreement and $375 when completed. If this offer is not accepted, the matter will go to my attorneys and the offer to settle is withdrawn. I hope that this will be acceptable to you as I believe it is in both of our interests. Please let me know how you would like to proceed.

    A pdf of a signed version of this letter is attached and one has been mailed to you for your records as well as my attorney for the file.

    Thank you,

    Evan

    (personal information redacted to protect YOUR privacy)
    Site Moderator
     
  6. IlyaM

    IlyaM Law Topic Starter New Member

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    I declined the $750 offer as insufficient. He offered $1000 as a last one which is also low.
    Now I want to save my company name because the whole thing makes me furious. They are willing to spend a much higher than $5000 amount on legal fees refusing to peacefully solve the problem.
     
  7. army judge

    army judge Super Moderator

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    There is no way FREE information can beat back a licensed attorney.

    The internet and its alleged FREE help is useless to you at this point if you value your business.

    You have already revealed and admitted far too much via your correspondence.

    You don't give away your products, and lawyers don't give away their services.

    I suggest you discuss this issue with three or four local trademark attorneys.

    You have placed your livelihood in a precarious position by communicating with your accuser.

    Your best option now is to hire an attorney, or risk devastating financial consequences by pursuing FREE (often faulty or flawed) advice.

    I wish you well.
     
  8. Michael Wechsler

    Michael Wechsler Administrator Staff Member

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    Sorry to hear about your legal problem. Your business name is your "trade mark" - it is the "mark" of your trade - your business. Filing for a "federal trademark" is a different story. It grants the right holder protection over the name across the country.

    Some of your points made are good ones but no one here can say where this will ultimately go. This is because only a court can make a decision on whether one trade mark is in violation of another, with the standard being the 'likelihood of confusion' of consumers in the marketplace. This is not a simple task and, what we may think may not be what evidence may yield and what the decision of those authorized to rule on a legal matter may find.

    There is a similarity between your two names. A right holder will always want to have broad protection that may extend beyond legal rights. It's difficult for any of us to say whether that is the case here because it's not a clearly defined boundary.

    Registering for a corporation in New York does not imply, infer or grant any trademark rights. You're advised to perform a trademark search before you register a company name.

    You've also got some other challenges in your filing being in 2016 and the Doughnuttery having used the name in New York City and their federal trademark application predating your own registration. They also seem to have registered the name in conjunction with both food (donuts) and restaurant services. This doesn't mean that you definitely have a problem but, if a judge finds there is a likelihood of confusion in the marketplace, your claim would be inferior to theirs.

    Chances of a lawyer taking this case for free / pro bono or the bar association providing the same will likely not happen. There are usually far more needy persons who require assistance that are likely higher on the priority list, e.g. those who are destitute, those who are afflicted by a particularly troubling legal issue or series of claims, etc. And there is no contingency here for potential monetary reward, e.g. if the lawyer wins the case there isn't likely a large recovery justifying their costs and efforts.

    Litigating a trademark case (intellectual property) is usually expensive. This may be why the offer increased but it is up to you to decide how to proceed. Given that your business identity is very important, I'd highly advise you to obtain a proper legal consultation with an experienced trademark attorney. That's the best I can say right now and best of luck.
     
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  9. IlyaM

    IlyaM Law Topic Starter New Member

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    Thank you very much.
     
  10. IlyaM

    IlyaM Law Topic Starter New Member

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    It’s very much informative.

    Thank you.
     
  11. Michael Wechsler

    Michael Wechsler Administrator Staff Member

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    I should make clear that the term 'trademark' is an English word as defined by Websters and in our own Law Dictionary defining trademark. It is a business and legal term. Filing for federal or state protection or having legal common law rights extends the meaning of that term to a series of actions which will determine your legally recognized right to use the term and enforce that right against others, as is the case here. Good luck.
     
  12. IlyaM

    IlyaM Law Topic Starter New Member

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    I should make clear too that my name, Brooklyn Doughnutry, is not trademarked. The word Doughnutry simply means a place where doughnuts are made (bake - bakery, dentist - dentistry) when Doughuttery is just a play on that. My name also has Brooklyn in front of it.
     
  13. Michael Wechsler

    Michael Wechsler Administrator Staff Member

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    It's a good argument but it's not a recognized English word, just an application of the word. I don't see it in the Oxford or Webster's English Dictionary. However, I've seen it used in searches in the manner you believe it to be used.

    The answer as to how the law should be applied may not be clear. For example, if you used "Brooklyn Krispy Kreme" then it wouldn't matter that you've also included the location of your business in your name. The second half is a unique term, not an English word, and thus would very likely be confused as associated with the famous doughnut franchise, Krispy Kreme.

    However, in your case, the question of whether 'doghnutry' is perceived as a place where donuts / doughnuts are made (or other similar meaning) and similar to other recognized words using an 'ry' suffix such as dentistry or armory is difficult to ascertain. It's not a clear case and also why the trademark owner may be facing a costly trademark prosecution trying to determine whether they do have rights to what seems to be a "suggestive" or "descriptive" word or term.

    You probably do yourself little good by writing to a trained professional who will use your words against you if he can. His job is to protect his client and their business. There are two choices here: (1) fight it out in court and someone will face a significant financial loss; (2) settle the case either with him buying out whatever right you may have or being able to create some co-existence agreement without infringement of each others rights, which may not happen - and certainly shouldn't without you having a trademark lawyer representing you and who understands all the details in this case and your rights which may apply (and your leverage.) Understand that if he doesn't prosecute, he may face a problem with establishing his trademark rights going forward.

    That's the best I can offer in terms of insight. It's your livelihood and business. Do yourself a favor and hire an experienced trademark lawyer.
     
  14. IlyaM

    IlyaM Law Topic Starter New Member

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    Thanks a lot.
     
  15. zddoodah

    zddoodah Well-Known Member

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    As much chance of finding anyone else to do important things for free. Do you and your business work for free? Why would you think a lawyer might work for free?

    FWIW, I will tell you that your best argument is that "doghnuttery" or "doughnutry" (the spelling differences are inconsequential) is a generic term for any store that sells donuts and, therefore, is not protectible under federal or state trademark law. At worst (for you), it's descriptive and, therefore, requires evidence of secondary meaning to be protectible. I'd also point out that your letter in response to the initial C&D letter confuses the word marks and the graphical marks, which are two separate things.
     
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  16. IlyaM

    IlyaM Law Topic Starter New Member

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    Appreciate your response.

    Btw, there are cases when I give away my product for free.

    Thanks again.
     
  17. adjusterjack

    adjusterjack Super Moderator

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    This layman's advice.

    You sell donuts in NYC, they sell donuts in NYC.

    You're infringing.

    Take the $1000 and change your business name to Brooklyn Donuts (assuming there is no other business called Brooklyn Donuts).

    Oh, now you're furious. You were happy to change your name for $5000. Now you're mad because you only got offered $1000. Sounds more like greed, not anger.

    Are you?

    You'll spend a lot more than $5000 to fight this in court. Who has the deeper pockets, you or them?
     
  18. IlyaM

    IlyaM Law Topic Starter New Member

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    It’s basic math. $5000 is my expense for changing name. Do you need a professional estimate?
    All I do is making handmade donuts and I never heard about that company before. All I wanna do is to be left alone and be popular within a few blocks radius.

    One more thing. I just asked a question in the beginning and didn’t expect it’s simplicity to cause such an emotional feedback
     
  19. Michael Wechsler

    Michael Wechsler Administrator Staff Member

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    The advice to you is to try to calm down and make a good rational decision, even though I can understand how emotional this is and how upset you must be. You just enjoy making donuts and don't want to deal with this hassle. But they probably will not allow you to just make donuts using this name within a few blocks... maybe they will but I wouldn't be confident since they appear to have a federal trademark and money behind them.

    The points given by @adjusterjack are valid. And as I mentioned, you're not starting out in a strong position. If your business trade name is worth enough money, consider the chances of a defense. If "Brooklyn Donuts" works for you, then consider a strategy that perhaps you can get a settlement amount that at least covers costs.

    Getting a lawyer will also cost you money - and it may or may not help you get a better settlement. It's impossible for anyone to know the better road forward. Perhaps if you give them a take it or leave it offer that covers your expenses, they may agree. But be prepared to have to sign an agreement you may need an attorney to review too (so that will be calculated into your expenses.)

    Sorry you have such a problem but these are the options you have - fighting it (probably not a strong position from the little I know) or settling it (and trying to get your expenses.) It's a tough call but you have to make it. Good luck.
     
  20. IlyaM

    IlyaM Law Topic Starter New Member

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    This discussion can be endless but I don’t want to waste more of your time. Thank you very much for such a professional advice.
     

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