Successful Defense of Tradename and Trademark Infringement Claim

Have you been sued for trademark infringement? If so, an important tool to defend your use of the challenged tradename or trademark may be the common law doctrine of concurrent use.

The main proposition of the doctrine is that common-law trademark rights extend only to the territory where a mark is known and recognized, so a later user may sometimes acquire rights in

pockets geographically remote from the first user’s territory. The Lanham Act has significantly limited the application of this doctrine, giving nationwide protection to a trademark user with federal registration, yet the doctrine still has applicability where the junior user establishes common law rights prior to the senior user’s federal registration. The junior use must be in “good faith,” but the standard for good faith varies depending on several factors including where the infringement is alleged to have occurred, knowledge of the senior user’s prior use, and the intent of the junior user.

Hayes Hunter PC recently applied the concurrent use doctrine for a Houston-based cheese distributor in a trademark infringement action brought by California competitor. The competitor claimed that it owned exclusive rights to a mark that closely resembled the Houston distributor’s business name and trademark. The competitor sued to prohibit the Texas company from using its business name of longstanding on its product packaging and advertising.

The competitor had registered its mark with the United States Patent and Trademark Office and claimed to have been using the mark continuously for their food products since 2005. The competitor contended the Houston distributor was confusing customers and relying on the competitor’s good reputation to drum up business for itself unfairly.

However, the Houston company did little business outside of Texas and none in California. It had not marketed to California, and the California company, whom historically had limited its business to the Los Angeles area, was trying to penetrate Texas markets that the Houston company had served for decades.

In the infringement litigation, the Houston company counter-sued to cancel the competitor’s trademark and for damages from its interference with the Houston distributor’s contracts with buyers. It also sought a declaration of concurrent use.

Hayes Hunter PC founder Charles Hunter helped mediate a solution that allowed the Houston distributor to (1) continue using its business name and (2) continue using its mark for products sold in Texas, New Mexico, Arkansas, Louisiana, Oklahoma, and Georgia. We congratulate the Houston distributor on its continued protected use of its distinctive mark in these major markets and for the successful defense of its right to use the mark concurrently with its competitor.

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