Location: Tennessee, USA
My wife owns a microbusiness selling wax melts and candles and accidently stepped on the toes of a trademarked scent name from a larger company. We were unaware that this was a trademark, as it’s a very common word (not it, but think “Fussy” or “Baby”) that one would not expect USPTO to issue rights to. (we had some issues ®’ing her LLC as it included “Basic words that USPTO will not allow trademark to”).
For context: When you make a scented item, you buy the fragrance oil from vendors. Most things are generic, like “Leather”, “Orange”, or “Amber”, but if it’s a scent similar to a trademarked, like “Chanel No 5” then the oil will be called something along the lines of “Chanel 5 Type” alluding to the registered nature of the name.
We bought an oil called (not the real name) “Fussy” and it did not allude to a ®, so we called the wax melt by this name, and used it for a couple of years.
Got a cease and desist from a larger company, and the lawyer is demanding us to:
1. Stop selling with this name (fair enough, I checked USPTO and they do in-fact own the ® so I stopped it, no-brainer, so it was pulled that day and renamed to something else)
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Submit all financial records to him (everyone + Google says this is not a valid legal request)
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Submit all product to the company for destruction, and we’re not allowed to rename them (same as #2, everything tells me this is not a lawful request)
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Comply with a response to his letter within 10 days or face legal action (Afraid to acknowledge this and try to explain as it could be seen as admission of guilt. This guy seems to be the stereotypical A-hole lawyer, not the nice kind I’ve worked with.)
I appreciate any insight you can offer, before I have to take this to legal council. He’s sent me an email first, then a (non-registered) letter, and now is hounding my email telling me the post-office gave him proof of delivery and he needs a reply.
This is my disabled wife’s side hustle, it’s not really feasible to get into the legal weeds as there’s not really any money to do so. Appreciate any help.
Comments
How is it not a lawful request? He’s not asking you to steal a car. You have three possibilities here. First, do what he says. Second, refuse to do what he says and see if they take it further and file a lawsuit. Third, hire a lawyer to possibly respond that you will do some things but not two other things. I would do the third, and I would not do the second. But the first is viable as well.
>This guy seems to be the stereotypical A-hole lawyer, not the nice kind I’ve worked with.
Everybody on the wrong end of a lawsuit thinks the attorney on the other side is an asshole when they’re really just making sure they’re serving their client’s interests.
If this venture isn’t making you money to be able to able to fight a potential lawsuit, just give it up.
There aren’t any more typical asshole lawyers than typical asshole weathermen or typical asshole bus drivers. It’s just that bus drivers never tell anyone something they don’t want to hear. That aside, if it’s “not really feasible to get into the legal weeds as there’s not really any money to do so” then you should probably agree to the request.
Those requests are lawful, in the sense that it’s not illegal or unlawful to request it.
It’s up to you whether you want to comply or not.
A cease and desist letter is just that, a letter asking you to do something. It’s not a legal requirement document.
It might be worth it to hire an attorney to see if a response is warranted … but you’re doing the right thing as far as not selling it with that name anymore.
They can request anything they want. If they were to sue you for trademark infringement, then they could receive a copy of your financial records (because they would be entitled to your profits) and have infringing products destroyed.
It’s probably a form letter that they send out regularly. Your best response would be to have a lawyer get in touch with the other lawyer and have a discussion. Chances are they’ll be perfectly happy if you just stop using their mark. They’re not interested in getting financial records from a microbusiness and it’s not worth their time or effort to sue you over it.
An unlawful request would be anything that is against the law to request. none of these items fit the criteria.
A C&D doesn’t compel you to do anything, it’s simply a legally-drafted letter on legal letterhead requesting you stop doing XYZ in order to protect the client’s interests. It’s not a demand.
In the scheme of copyright protection, none of this is unreasonable, much less unlawful, and none of it seems particularly assholish, either.
You are welcome to ignore points 2 and 3 now that you’ve removed the product, but since you seem worried, consulting with your own attorney is not an unreasonable thing to do.