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Changing a name may not suffice in resolving infringement claims

Nov 11, 2020 | Trademark

Imagine you run a business. You’ve spent months developing a new product design and recently launched it with some exciting success. However, it is not long before you get a cease and desist letter from another company claiming your new design infringes on their trademark.

While you disagree with the claim, you decide that making a slight adjustment in color or tweaking the product name will suffice. Unfortunately, resolving trademark infringement claims is not necessarily this easy.

Small changes can still mean big problems

Trademark infringement does not mean another party has copied a logo or used the same business name as a trademark holder – although copies could certainly trigger infringement claims. Rather, it means that the work in question is similar enough to create confusion among consumers.

Because of this, making a small, insignificant change to infringing material may not go far enough in terms of eliminating that confusion.

Further, while it may seem like a small change is easier to implement than a more dramatic change, that may not be the case. Resolving trademark infringement can require parties to pull the existing product from the shelves and then redesign, remake and restock it.

These steps are the same, whether the change is minor or substantial.

New name still “confusingly similar”

As an example of what could happen when parties do not go far enough to address infringement, we can look at the current dispute between two computer companies.

Virtual Compute Corporation (VCC) claimed that NVIDIA infringed on its vCompute trademark by using the same mark. Citing the high likelihood of confusion among their customers, VCC notified NVIDIA about the infringement.

NVIDIA recognized VCCs trademark rights and changed its vCompute mark. However, they changed it to Virtual Compute Server (vCS) NVIDIA.

It’s a different name, indeed, but VCC argues that vCS is still confusingly similar to their name, VCC, which is also trademarked. Thus, VCC filed a lawsuit requesting that NVIDIA change the name and compensate VCC for losses, costs and fees.

Making changes, not mistakes

Before you make changes in response to infringement allegations, it can be wise to consult a legal professional and do your due diligence in researching potential conflicts of a proposed name or design change.

These steps can help you make decisions that actually solve the problem.

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