I have two clients in trademark disputes regarding the use by another company of an identical or very similar business name and in the same industry. They are on different sides of the fence bu each is facing the same question: Do I proceed with extremely expensive litigation or try to come up with some compromise? Neither wants to proceed to litigation but don’t know how to think about a co-existence. One party has suggested a licensing arrangement where a percentage of sales goes to the priority user. Another has suggested something as simple as a website pointer to ensure consumers are taken to the appropriate site. Alternatives also include an agreement between the parties not to move into one another’s core business or for one to pay the other to change their brand so as to separate the marks. The question to be answered is whether actual consumer confusion exists or is likely and what do the businesses have to do to alleviate the confusion. There is not one clear answer but usually something that works between the parties. It is important, though, when entering into these agreements to think about the future of the business — where will the business be in 5 years — and to ensure the agreement does not limit the business’ potential growth by limiting the use of the mark or, worse, by allowing another party to leverage its success and dilute the mark.

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