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Can someone help me with the trademark dispute

go giver

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May 18, 2018
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Quick story
My family have started a shop near our house we focus mainly on quality and organic products. inorder to brand it I have created a logo named organo and we have created banners with our logo.

but recently I have got a call from
company saying that they have registered and trademarked the name organo for there products for like 7years(but still they have a tm not the r sign.they are into selling organic honey and other stuff we are a different category.
i don't know what to do
Should i change the name?
Down to suggestions
 

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Kak

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I would do one of two things...

1. (What most people would do) Consult a lawyer.
Or
2. (What I would do) Ask them what it would take for them to be comfortable with your use of the word so that you can continue to use it. Just make it clear there is no confusion intended and that you are sorry for causing alarm. Ask what about it they feel infringed and see if you can come to a mutually acceptable solution without lawyers.

Chances are good you can come to something with an open dialogue.
 

Tourmaline

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Would be nice if they come to an agreement as @Kak suggests! Goodluck to you.
 
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go giver

go giver

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I would do one of two things...

1. (What most people would do) Consult a lawyer.
Or
2. (What I would do) Ask them what it would take for them to be comfortable with your use of the word so that you can continue to use it. Just make it clear there is no confusion intended and that you are sorry for causing alarm. Ask what about it they feel infringed and see if you can come to a mutually acceptable solution without lawyers.

Chances are good you can come to something with an open dialogue.
They've asked me to remove the banners with the logo asap or they will go forward legally.
 

Lucky Lu

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They've asked me to remove the banners with the logo asap or they will go forward legally.
The document that you've received should be a "cease and desist". If that is the case your better option is to consult an attorney, not only to try to negotiate if you want but to be sure you won't be liable even when you stop using the name. If you are right and they are not in the same category as your business you can have a chance on the name. Again, at this point it would be safer to get a little assitance.
 

KeenanM

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Aug 10, 2019
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Your next step is to consult an attorney if you’ve received a C&D. Nothing anyone here can help you with.
 

JScott

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If you decide to fight it, consult an attorney ASAP...

Keep in mind that part of having intellectual property is that you must make reasonable attempts to protect it. If an IP claim goes to court and the court determines that the license holder didn't make reasonable attempts to protect the mark (for example, using cease and desist letters), this can hurt the mark holder's claim.

This is why -- even if the mark holder wants to let you use it -- they may still insist that you don't. This is just something they are required to do. Not to mention, their lawyers will tell them as much, as the lawyers want to get paid.

So, you can try going down the negotiating route with them, but don't be surprised if they aren't receptive to it. It may not be personal. And having an attorney negotiate on your behalf is much more likely to result in an agreement than trying to do it yourself.

For what it's worth, I once fought a trademark suit -- we settled long before it went to trial, and I still spent nearly 6-figures in court and attorney fees. I would think about how much it would cost to change your brand, and weigh that against your potential legal costs to defend.

Just my $.02...
 

MichaelCash

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Maybe you can add one more word to you brand, e.g. Organo Pittsburgh (whatever your city/town is) or Organo Groceries?
This is a tricky situation. You should definitely ask a lawyer
 

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inorder to brand it I have created a logo named organo and we have created banners with our logo.
How deeply are you invested in the ORGANO mark? If you just came up with it, it might be easier to just start again than waste much time on it.

But a phone call can't hurt, as @Kak suggested. Don't commit to anything, but just get a sense of what they are about.

How big are they? Do they have deep pockets? What is their litigation history?

Lots of cease and desists originate from 1) a mark owner getting unreasonably upset 2) consulting a lawyer to "just write a letter, that's all I want" 3) lawyer writes a ridiculous and bombastic letter assuming it will scare non-lawyers.

Most people just get scared and cave. But, don't forget, the other side as to pay attorneys' fees too and litigation isn't cheap. They probably just want to spend $500 on the cease and desist and hope you give up.

So, a phone call can't hurt. But if you just came up with the mark and aren't heavily invested in it, it is probably a lot easier to just move on.

Would your customers be confused and care much if you used a different mark next week?
 
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go giver

go giver

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May 18, 2018
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I would do one of two things...

1. (What most people would do) Consult a lawyer.
Or
2. (What I would do) Ask them what it would take for them to be comfortable with your use of the word so that you can continue to use it. Just make it clear there is no confusion intended and that you are sorry for causing alarm. Ask what about it they feel infringed and see if you can come to a mutually acceptable solution without lawyers.

Chances are good you can come to something with an open dialogue.
Thanks for the idea . I have given him a call but it does not went smoothly he says that he had fought two dispute for the name organo so he his not willing to do any compromise.
 
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go giver

go giver

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Maybe you can add one more word to you brand, e.g. Organo Pittsburgh (whatever your city/town is) or Organo Groceries?
This is a tricky situation. You should definitely ask a lawyer
What about organos with a tagline "grown from nature".
 

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Kak

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Thanks for the idea . I have given him a call but it does not went smoothly he says that he had fought two dispute for the name organo so he his not willing to do any compromise.
Hey, sometimes things like that work and other times they don't. At least you got to the bottom of this quickly. Which is another thing I like to do.

Good luck with what you choose to do.

Also, in business, competency is everything... I am going to make a suggestion, not to be a dick, but to help you. Work on your grammar. It is horrendous.
 
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Entre Eyes

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I have a simple formula I use for personal and business...treat others as you wish to be treated. There are a ton of alternative just as catchy and short names to use and I will volunteer to send you over a few if you like my friend.
 
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go giver

go giver

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Hey, sometimes things like that work and other times they don't. At least you got to the bottom of this quickly. Which is another thing I like to do.
End of dispute changed the name to organos.
 
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go giver

go giver

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I am going to make a suggestion, not to be a dick, but to help you. Work on your grammar. It is horrendous.
I am from India and English is not my mother tongue.
Pardon on my english
 
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Kak

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I am from India and English is not my mother tongue.
Pardon on my english
Interesting. So this person with a trademark claim is also from India? Or are they from Europe or the US?

I have never dealt with an international IP dispute before. That is interesting and pertaining information.
 

Kruiser

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End of dispute changed the name to organos.
Are you in the U.S. dealing with a U.S. company and a U.S. trademark?

If so, changing from ORGANO to ORGANOS probably isn't going to do anything for you (unless the mark owner is going to be satisfied, which I'm guessing he won't be based on your description of the conversation). The standard is (more or less) "likelihood of confusion," not "exact character for character matching."
 

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Did they tell you that they are ok with Organos?
 
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go giver

go giver

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Did they tell you that they are ok with Organos?
Yep they said they are ok with it.
As an evidence have recorded the voice conversation with him .so I hope there will be no more issues with the brand name.
 

Lucky Lu

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Yep they said they are ok with it.
As an evidence have recorded the voice conversation with him .so I hope there will be no more issues with the brand name.
Congratulations. Would be great if you can have that in writing (just one major step into proving a potential case without much hassle), at least a simple wording stating that.
Again, I´m glad you were able to resolve it.
 

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go giver

go giver

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Congratulations. Would be great if you can have that in writing (just one major step into proving a potential case without much hassle), at least a simple wording stating that.
Again, I´m glad you were able to resolve it.
That might not be easy because he is abroad.i hope the voice call is enough of an evidence to prove my clean hands
 

Lucky Lu

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That might not be easy because he is abroad.i hope the voice call is enough of an evidence to prove my clean hands
Is there any chance that you send him something and he signs it from overseas and send it back via email? Or at least express his agreement on an email?

Did you disclose to him that you were recording the conversation? In many jurisdictions non disclosing that makes the recording inadmissible.
 

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