Legal Question in Business Law in Illinois

Possible trademark infringement

We launched GreenPromise dot com

in Jan 06 with our trademarked logo.

We write content regarding natural

and organic products and provide

resource lists in the green arena. We

have just learned about Benjamin

Moore's Natura paint, which boasts a

Green Promise designation. We

haven't registered Green Promise yet

with the PTO as we are building our

trademark's secondary meaning

before we register it. We're

wondering if we are justified in

contacting BM regarding the risk that

consumers will think we are

endorsing their paint. Was BM

negligent in searching whether this

mark was in use? Is this TM

infringement? I'm hesitant to send a

C&D because I'm small potatoes and

don't want them to respond with a

declaratory judgment lawsuit.


Asked on 10/23/08, 11:46 pm

1 Answer from Attorneys
Motty Stone Law Offices of Motty Stone

Re: Possible trademark infringement

First of all, if I had to guess I would say that "Green Promise" is inherently distinctive enough that you won't need to establish secondary meaning.

Second, the paint mark is probably in a different product class than the services you offer, so you may have a chance to both use the mark without any conflict.

Trademark law is tricky because if you do not enforce your marks you will lose them. You need to get together evidence of your earliest use of the mark, even if you are not worried about a declaratory judgment suit.

You could try filing an application with the USPTO and go that route. You could try a cease and desist letter. You could "wait and see" what happens. But you will be in a much weaker position if you knew about this infringing mark and did nothing attempt to enforce your rights.

Please feel free to give us a call if you want to talk about the details.

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Answered on 10/24/08, 10:48 am


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