3 ms·
I think you also don't strictly have to sue even if there is an actual violation; you can approve individuals to use a mark without totally abdicating your righ
by yebyen 9y ago
I think you also don't strictly have to sue even if there is an actual violation; you can approve individuals to use a mark without totally abdicating your rights, giving stipulations. That would be creating a licensed use (and then there is no longer a violation.)
You do sometimes need to formally assert your ownership of the Trademark in order to maintain your legal protections, but you do not have to open with "Cease and Desist" in 100% of cases where a mark may be confusing in order to retain protections. I can't think of a specific case where this happened right now, but I have definitely heard of this happening. Maybe someone here knows of such a case. I think it was a company that produces video games.
(A competent IP lawyer would probably advise you against diluting a brand in this way in most cases without having a very good reason for allowing the use. The case I am thinking of was something along the lines of "going after these people with a legal threat right out of the gate is likely to result in severe bad PR for us because they are likely to be seen by our customers as performing a valuable service." So let's ask them nicely to change the name, or offer them a license for a nominal fee of $1 to use the mark instead; bring them into legal compliance, maintain our protected position, reap positive PR and save on lawyer bills.)
In the case of this thread I definitely agree that the lawyer is totally out of bounds.