Should I be worried that another company contacted me about trademark infringement?

UPDATED: Sep 30, 2022

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Should I be worried that another company contacted me about trademark infringement?

A company called marmalade cafe contacted me and said that my company name marmalade on main was confusing its customers and had their lawyer

draft a cease and desist or they will take judicial action. We are both restaurant they are located with 8 or 10 locations in Los Angeles area, and we are a

small startup in San Diego. We have never heard of they’re company before this. Is this common? They have a service mark principal register as

marmalade cafe, does that mean they can stop anybody from using the word marmalade in their name?

Asked on March 11, 2016 under Business Law, California


SJZ, Member, New York Bar / FreeAdvice Contributing Attorney

Answered 6 years ago | Contributor

It's not that they can stop anyone from using the work "Marmalade" but they can stop someone from using it in a business name if the combination of the name, the location[s] of the businesses, and the type[s] of businesses could reasoanbly confuse customers as to the affiliation of the companies or their identity. It is a very fact-specific inquiry, and you are advised to consult with an intellectual property attorney about the situation; the lawyer can advise you as to the strength of their case and your options. Working against you will be that you are both in the same line of work--restaurants--and the names are very similar; that increases the likelihood of confusion. Working for you is that you are in different cities with (presumably) different customer bases--that reduces the chance of reasonable confusion.
Illustration of how they can't stop all use of "marmalade," but only confusing uses: I used to work for an educational textbook company whose main product was the "Coach" workbook, so called because it "coached" students to do well on tests. The "Coach" handbag company brought a suit that we were infringing their trademark. The case was dismissed by the court, because the court felt that no reasonable person would confuse textbooks and handbags--ergo, they could not stop a nonconfusing use of the word "Coach."

IMPORTANT NOTICE: The Answer(s) provided above are for general information only. The attorney providing the answer was not serving as the attorney for the person submitting the question or in any attorney-client relationship with such person. Laws may vary from state to state, and sometimes change. Tiny variations in the facts, or a fact not set forth in a question, often can change a legal outcome or an attorney's conclusion. Although has verified the attorney was admitted to practice law in at least one jurisdiction, he or she may not be authorized to practice law in the jurisdiction referred to in the question, nor is he or she necessarily experienced in the area of the law involved. Unlike the information in the Answer(s) above, upon which you should NOT rely, for personal advice you can rely upon we suggest you retain an attorney to represent you.

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