Our client operates a company that manufactures and sells trophies, memorial plaques and awards to businesses, civic associations, sports organizations and others.
The client purchased the trophy company from its founder in 1990. The founder had operated the business under his name and in a portion of a building that he owned. As part of the deal, the client bought the rights to the name and continued to operate the business under its original name and in the same location. The founder continued to operate a separate business in the other half of the building.
After the founder died, his children took over both his business and the ownership of the building. They refused to renew the client’s lease when it expired and the client was forced to relocate his trophy business to a location 10 miles away.
After the client relocated, the founder’s children started their own trophy business in the old space and used their last name – the same name used by our client – to capture the good will that our client had built up over the last two decades. Established customers visiting the old location did not know that our client’s business had moved and that they were buying trophies from a different company.
Belatedly, the client sought to trademark the name of his business. He then hired an attorney to file a civil action for trademark infringement and unfair business practice, complaining of a host of real and perceived injustices. He obtained an order from the Superior Court which provided limited relief – the founder’s children could not use the word “trophy” in connection with their last name, but they could use the word “awards.”
Following extended litigation, our client’s legal budget was depleted and the outcome of a pending trial was not assured. He came to YSR seeking a business solution that would protect the investment in his business without leaving it broke.
We visited with the client at his new location, talking to his employees, and reviewing his print and radio advertising and promotion methods in order to understand what was actually important to his business and what was not important.
With that understanding, we were able quickly to negotiate a settlement agreement that separated the client’s business interests from those of the defendants. The agreement gave our client enforceable rights in the marks and trade dress that mattered to him in return for granting the defendants rights in those that did not. The settlement stopped the costly litigation and resolved the uncertainty that comes with a trial, both of which greatly pleased our client.