Legal Question in Intellectual Property in Michigan

Ms. Archibald,

Your "namesake's" attorney is incorrect. Use of a federally registered mark anywhere in the United States without the permission of the mark's owner can confuse the public, which is the big requirement for a trademark infringement suit. Federally registered marks are good throughout the United States.

You can find the text of Polaroid Corp. v. Polarad Elects. Corp., 287 F.2d 492 (2d Cir. 1961), which is the seminal case defining what the courts look for in a trademark infringement suit, at http://cyber.law.harvard.edu/metaschool/fisher/domain/tmcases/polaroid.htm . There you will find that the courts look for a series of factors: "...the strength of his make, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers." Polaroid is a Second Circuit (New York, Vermont & Connecticut) case and you're in the Sixth Circuit in Michigan, but Polaroid is wildly popular on the federal bench and each Circuit has adopted its own list of factors (the factors may be slightly tweaked from those of Polaroid, but the intent is the same).

Your understanding of where you can sue her ... well, invoking long-arm jurisdiction by suing her in your state can be painful and expensive. The most expiditious place to sue someone is in their own jurisdiction, where there is no question of personal jurisdiction and you don't subject yourself to the expense of defending against a forum inconveniens motion.

If you, personally, sent this person a cease-and-desist letter, I'm not surprised at the response you got; you should have your trademark attorney deal with this person and her attorney. If you're looking for a trademark attorney to handle this with you, feel free to call my office at 518-371-4599; I'd be happy to discuss working with you on this matter.

THIS POST CONTAINS GENERAL INFORMATION AND IS INTENDED FOR ENTERTAINMENT PURPOSES ONLY. IT DOES NOT CONSTITUTE LEGAL ADVICE, NOR DOES IT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP. FOR LEGAL ADVICE ON YOUR PARTICULAR MATTER, CONSULT YOUR ATTORNEY.