A few months ago, Divimark was contacted by two young entrepreneurs who were facing a legal challenge regarding their intellectual property rights.
These two entrepreneurs’ business is centered around the creation of baked goods, specifically cookies.
A year ago, they filed their trademark application before the Trademark Office with their original name. This application was reviewed and deemed appropriate by the Office, therefore, allowing the publication of the edict.
Soon after the publication, they received a cease and desist letter from another law firm. The letter stated that their client had been running a business for over five years, with a similar name, that also specialized in baked goods.
The firm was giving our clients ten days to do a total rebranding of their business, and therefore, desist from their original application and name. In addition to the letter, an opposition was also filed against our clients’ application.
Given this situation, these two individuals decided to seek help and guidance from Divimark to evaluate their options and understand their rights.
While reviewing the case, the first thing that our firm noticed was that the opposing party’s application was filed the same day as their opposition, meaning that not only did they not have their trademark registered for all of the years that they were supposedly in business, but also that our client’s application was filed three months before theirs.
With additional investigations, our firm discovered another similar trademark that was registered to protect baked goods. This added a layer to the already existing case between our client and the other firm’s client, since this other trademark now had to be taken into consideration when determining the best legal strategy to move forward.
We presented our client with two options. Firstly, they could continue with the original trademark’s registration process, await the Trademark Office’s resolution on the opposition, and wait to see if a second process would be initiated, due to the previous existence of a registered trademark, or, they could desist from the initial application, create a new name, and begin the registration process from scratch by filing a new application.
With the first option, we could have defended their original application, which we had strong, compelling arguments for; nonetheless, it would have taken a considerable amount of time to get a resolution of the opposition filed, and there was a high probability of having to defend the case a second time against the owner of the registered trademark.
The second option meant our clients had to quit their initial idea, which they had worked hard for; however, it also provided them with a higher, more efficient and quicker chance of registering their trademark.
Both strategies were presented to our clients to help them determine which one made the most sense for them and their business. Taking everything into consideration, we concluded that the most sensible option for them was to desist from their initial idea, create a new name from scratch, and file a completely new trademark application. This decision did not mean that there were not enough arguments to defend our case against the opposition filed; on the contrary, there were plenty of arguments that supported our clients’ right to register the mark. Nonetheless, sometimes it is not about winning the case, but about knowing when to quit to obtain an even greater gain.
By deciding to desist the original name, we were able to complete the registration process for the new trademarks in just three months (while the opposition filed against the original application has not even been resolved). By deciding to quit, we were able to provide our clients with a smooth and efficient registration process, which successfully concluded with their exclusive ownership over the brand AMARA® in class 30, and as a commercial name.
Since then, our clients have opened their first AMARA® store and are now available on the different delivery platforms. This case is a clear example that sometimes, quitting is equal to winning.
(Images obtained from the AMARA® Instagram account, website https://www.instagram.com/amara.bakehouse/)
