Keith Law, PLLC

Practical Trademark Protection

Podcast Episode 1—My employees are inviting my customers to a “reunion” at my competitor’s establishment!

Podcast Episode Timestamps

00:00 — Topic
00:34 — Overview of the anticipated structure of the episode
00:51 — The fact pattern
01:30 — Potentially applicable law
01:48 — Trademark overview (and related tangents)
10:57 — What if I registered my LLC or assumed name with the Secretary of State?
12:20 — “Woulda, coulda, shoulda; and why”—i.e., what if the mark was registered?
12:55 — A practical approach to the fact pattern
16:27 — Potential problems from failing to police a trademark
17:14 — Outro

The Situation

If I own a bar, restaurant, or coffee shop what can I do if a former or current employee hosts a “reunion” party at a competitor’s establishment aimed at current and former employees and customers?

When this happens, the name of your establishment is probably being used to advertise the “reunion” event. This situation give rise to potential claims under the Lanham Act (the federal trademark act), the Texas trademark act, and Texas common law (i.e., non-statutory law). Under the Lanham Act, claims related to infringement, false advertising, and dilution are probably strongest. Under the Texas trademark act, infringement, and dilution of a famous mark are probably the strongest claims.

If your business has amassed sufficient good will that advertising a “reunion” would attract business, then the use of your business’s name to lure customers to spend money at your competitor’s business is probably actionable.

So, what can be done?

Assuming you learn of the advertising prior to the event, a reasonable step would be to send cease and desist letters to both the folks advertising the event and to the business where the event will be held. This gives all parties an opportunity to cancel the event, hopefully before harm has been done—and it provides actual notice of the infringement. The letter should probably also instruct the folks advertising the event and the owner of the venue to keep good records regarding revenues taken in during the event in anticipation that when you take them to court you might be awarded those revenues or the net profits. It probably also makes sense to include a retention notice advising that all records and communications pertaining in any way to the event be retained so that if a lawsuit becomes necessary, the evidence will still exist to be obtained through discovery.

Although when it comes to folks’ misbehavior, nothing is guaranteed. Following these steps will increase the chances of avoiding or minimizing harm ahead of time and—if a lawsuit does become necessary—of increasing the chances of recovery for the harm caused. In many instances, your competitor will appreciate being given the opportunity to avoid its mistake ahead of time.

Take note!

It should also be noted that taking reasonable steps to protect your business’s trademark will help avoid future claims that your trademark is no longer protectable—either through abandonment based on failure to pursue infringers; or through acquiescence based on failure to object to infringement.

Disclaimer: This podcast and blog post are for informational purposes only and should not be misinterpreted as legal or other professional advice. If you have a legal question, you should consult with an attorney in your jurisdiction. Thank you for listening to the Keith Law, PLLC podcast.

(Photo by Andrea Piacquadio from Pexels)

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