An Economical Opening Salvo In Trademark Disputes

Traditionally, a shallow-pocketed small company doesn’t have many options when it is accused of infringing the trademark of a major corporation. To show in court that its product doesn’t cause consumers to confuse it with the bigger company’s product, the little guy would need to do a survey of shoppers in a mall, known as a mall intercept, that commonly costs tens of thousands of dollars. That expense, plus the other costs to litigate, can cause the smaller company to capitulate without a fight.

But Stephen Feingold, a trademark partner at Day Pitney in New York, has been trying out a new strategy. While not acceptable in court, a preliminary survey conducted over the Internet can strengthen a client’s initial leverage on the issue of marketplace confusion between two brands, according to Feingold. “We’ve done this a half-dozen times,” says Feingold. “Every time, we’ve had a very positive result. The other side has either come back with a reasonable settlement proposal or they’ve just let the matter drop.”