Like any good netizen, you have eliminated just enough information from your question to make it “safe” for publication on the Internet — and not give away your idea. Yet, trademark questions of all kinds are judgment calls. When a trademark attorney answers a question, they think about the current situation and (probably unconsciously too) compare it to the prior cases that they have read about. I have read hundreds and hundreds (if not thousands and thousands) of cases. There is no rule at law that says if your trademark varies by 40% or more, it is not similar. The first goal of trademark law is to prevent consumers from becoming confused about who is providing them stuff. So, by trying to ask this question anonymously, you have neutered the facts so it would be impossible to even guess an outcome.

Your mark could be any of these: mlbXL, MLB09, mlBAG, MlBOY (lowercase L), MLBUT, MLBAT, MLBUZ. As you can see, each of these gives a different impression, or commercial impressions. So, some of these may be (confusingly) similar to MLB and some may not.

Likewise, simply stating “baseball related service” is not enough. Are you providing stats for MLB on your website? Selling instruction on playing baseball? Providing online retail for baseball equipment? Running an umpire’s union? Each of these service runs in different channels of trade that could effect the analysis. Plus, there are several more factors (known as the “Du Pont” factors) that could be considered in a likelihood of confusion analysis. Then, there is the obvious problem that the MLB mark is famous, and, is probably accorded more protection.

Why would you want to incorporate someone else’s mark? Major League sports of all kinds really value their trademarks. They spend a lot of time and money enforcing their marks. If you need to even “use” the MLB mark to refer to the MLB in a commercial context (and not even as part of your trademark), I would recommend talking to a lawyer first. The lawyer can help you understand how to fairly use the MLB trademark. Confusion would not be the only issue with using the MLB mark, dilution (because of the fame of the MLB trademark) could also be an issue.

So, if you want to avoid receiving a cease and desist letter from Major League Baseball, you should seek the advice of your trademark attorney. In some states (including Arizona, I’m not sure about Florida), the information that you provide to an attorney, even before you hire or pay them, may be protected by confidentiality. Having said this, do not provide confidential information before an attorney ask you for the information. Every attorney has a process for screening potential clients to avoid conflicts and protect existing clients. These “prospective client” laws seems unlikely to protect someone who just randomly sends confidential information to every attorney without invitation.

We market our product in our gym and on Ebay. Recently, we received an email from a company that purchased our product and said it was in violation of the patent they had on their product called a Resistance Training System.

We contacted the company and discussed our product. They felt that they needed to protect their business, hence the contact they made with us. They again asked us to cease marketing our product.

I found their patent and read it. I’m not a lawyer and have never read a patent before. What I found was a very vague description of what the product does. It was so broad that it could cover a wide range of products that use body weight as a training resistance.

How do I know if I am in violation? We are a very small business; and we have only sold a few dozen of our trainers. However, we feel it could be a nice source of additional income down the road. Can you tell me how we be sure we are not in violation of the patent? We feel like we are being bullied by a larger company, realizing our ignorance of the law.

Any guidance you can give me would be greatly appreciated.

Thanks,
Dave

The long and short of my answer is this: talk to a patent attorney immediately.

Since you see potential value in continuing to sell the product, then the advice of a lawyer is now a cost of doing business. The uncertainty and discomfort that you now feel is one of the advantages your competitor has gained by going through the long and difficult process of filing for a patent. If you do not seek a lawyer, if you continue to market your product, if you are sued, and if you lose, you could be facing triple damages, because you know have knowledge of your competitor’s patent. So, one measure of patent infringement damages could be any profit-that-you-made times three. Sure, there are many IFs, but, you know this competitor has spent thousands or tens of thousands already on just the legal work to obtain the patent. There could be a patent infringement lawsuit waiting to happen to you.

Do not believe that you are an unlikely target for a patent infringement lawsuit because of your small size. When a company seriously sets out to start enforcing their patent rights, they may intentionally pick on small companies first. They know that the small companies will do anything not to defend an expensive patent lawsuit. They know that small companies enjoy the business certainty of a settlement or a license agreement. By setting up several small victories and licenses for their patent, the company will now have an easier time going up against larger companies.

It is best to respect the intellectual property rights of others. However, as you say, you are uncertain of what those rights might be.

The language in the patent is most likely not vague . When a patent attorney reviews your situation, he will also look at their patent, your product, the patent’s file wrapper (or, the history of the patent so far at the Patent Office), dictionaries (possibly including technical dictionaries and literature) and previously decided cases. By making a thorough review, the patent attorney can help you understand your options and give more precise meaning to the terms. Maybe there is an opportunity to design your product differently. Maybe there is an opportunity for your prior invention to invalidate their patent. Maybe there is an opportunity to search for invalidating prior art. Maybe there is an opportunity to license their technology or patent. Maybe there is an opportunity to write an opinion of non-infringement. And maybe it is nothing to worry about; or maybe your lucky to get a chance to stop before they sue you. Go see a patent attorney, today.

If your budget is limited, then just be upfront with your patent attorney about how much you wish to spend. Some patent attorneys offer free consultations. If so, take your product and their patent with you. Most attorneys will work with you at the budget that you set, provided that you understand that the potential options may be limited by your budget. Just remember, make a good business decision: the amount you spend on legal advice should only ever be a fraction of what you hope to gain in the marketplace.

First, you are going to need to know whether or not this is a real Tiffany & Co. ring. It is possible that you may not be able to figure this out on your own. You may need an appraiser or another expert’s help if you don’t have the original sales paperwork.

Second, you should know that many companies with strong brands now “police” ebay to ensure that their goods are not being “faked” or counterfeited. These companies hire lawyers to create automated computer systems to search ebay to find goods that might be infringing on their client’s trademarks or counterfeiting their client’s goods. This may be what is happening to you. Remember the lawyers that sent you your letter may have very little information. These lawyers may seek to broadly enforce their client’s right, even with minimal information. In other words, you may get a letter like this, even when you have the real thing. Counterfeiting is a real problem on ebay. If you bought counterfeit goods there, you would not be happy, and companies are responsible for making sure others do not use their trademarks for counterfeiting.

What you will do will depend on many other factors. Where did the ring come from? Do you have your original purchase paperwork? Has ebay de-listed the item? How did you list the item on ebay? Does the ring actually resemble a Tiffany ring? There is no single correct way to respond to a letter like the one you received. Your response depends on what you have done and what you know.

If Tiffany & Co.’s lawyers sent you this demand letter and the ring is authentic, that would be exceptionally bad form. They should be very, very, very embarrassed for threatening their own customer with legal action.

You may wish to consult with your attorney to help you decide what actions to take next.