Hi,

Need your opinions and advice on something.....

You have an company that has been running for nearly 2 years with an established theme, name and primary logo. This theme is fairly unusual and not really connected to the business being run.

You find a site/company that runs the same business and has a very similar name, theme and primary logo.

Sorry to be so vague ;), but we just need some ideas. How should you approach this (if at all) with the other party?

If "you" have trademarked your logo, and other elements of branding, one factor will be how close what the other company is doing comes close to what you've specified in your trademark documents.

While registration isn't necessary to protect a blatant trademark violation (as long as prior use can be established in other ways), it is really essential for more "gray area" infringements.

You might want to try, anyway, getting a lawyer to write a cease and desist lettter. Contrary to popular belief, that isn't expensive and doesn't have to bring a full-scale relationship with that lawyer. Most will just send out a boiler plate c&d for a pretty reasonable price. Depending on what happens next, you might decide on spending more time (and money) with that attorney later.

Hi,

We have a lawyer that we have dealt with previously and he is looking into the matter for us - he seems pretty confident that we can do something. I am just wondering whether or not to contact the site owner first before storming in with legal pressure.

There is a very small chance that this is a coincidence but in our opinion this site has taken a little more than inspiration from the "other" site.

SuperDon,

Unless you're dead set on getting compensated then I'd send a certified letter to the other company and see what their explanation is. No one wins in court except the lawyers. BTW, in my experience all lawyers seem confident at first.

Originally posted by SuperDon
We have a lawyer that we have dealt with previously and he is looking into the matter for us - he seems pretty confident that we can do somethingJust to be clear -- and basically in agreement with RichTek -- I wouldn't necessarily expect that "just any lawyer" would be in the know here. An intellectual property lawyer experienced in internet issues of IP would be familiar with precedent set in other similar situations. A general business lawyer would know what to write in a c&d letter. They both might have different opinions about whether your case is something worth pursuing -- based on their specific experience, or lack of it.

Anyway, whether it's signed by you or by a lawyer, you cease and desist letter doesn't have to come off as "storming in with legal pressure." It could be worded quite strongly and threateningly, but on the other hand doesn't need to be. The first communication should certainly be soft-pedaled as long as it's not a really blatant rip of your site or something along those lines.

Ok, thanks for the comments.

You must first decide on what you want to accomplish. Second, what is the degree of similarity. Third, what are the damages to you.

Then you can outline a plan.

For instance, if you feel you have incurred significant damages and you want to collect money from them, then an attorney is required. On the other hand, if you just want them to change their site, a much lower key approach would be a starting place.

Now, if your desire is to collect money, the following must happen. 1-Your case must be solid. 2-You will have to spend considerable money. 3-You must win. 4-The win must be enforceable (they must have money and you must be able to reach it). In most cases, all you will get is a "cease and desist" agreement unless you can prove copying and damages.

Frankly, I don't generally like to devote that level of resources, so I try to just resolve it simply and ammicably.

We dont want to sue or anything like that as no financial damage has arisen (as yet).

We are just looking for a name change and a redesign of the main logo and theme. This should not be too much of a problem as thecompany is very new and unregistered.

We will be contacting the other party directly and see what response is given, failing that our lawyer will look further into this and work out the next steps involved - he realises he may not be the man for the job.