Band logo infringement

[kate]

First, thanks in advance for any responses to my problem.

Ok, in 2004 my husband formed a rock band in Mexico. Very early, he designed a logo that is a rooster. He created the rooster exactly how he wanted it in Adobe Illustrator, so that it would not be identical to any other rooster image.

They printed stickers, DIY CD covers, buttons, in those early years (at least by 2005) that used the rooster as the logo. It also appeared printed on flyers for clubs where they played and we still have at least one of those. It also appears (though incomplete) on a CD that they had manufactured in 2006. In 2007, they started selling merchandise via cafepress.com that included the logo (and the website still shows that the image was added in January of 2007).

In 2008, another rock band formed in Mexico City formed and started using a very similar logo. Basically their logo is an origami version of my husband's band's rooster. They became more known than my husband's band, and because of this, my husband's band stopped using the rooster bass drum head they had and stopped making t-shirts with their own logo. They do, however, still sell stickers and pins with the logo and still sell the merchandise on cafepress.com.

Today, the other band posted pictures of two new t-shirts they are selling that are practically identical to the shirts my husband sells on cafepress.com. We sent them a note and showed them that the t-shirt and the logo are too much like the my husband's t-shirts and logo, but they blew us off.

Partly because they were rude, and partly because it's not ok that the brand we've been building for 8 years is now worthless to us, we would like to do something.

Do we have any options?

Thanks so much!!
Kate

[AFFA]

I wish to inform you that if you were having a trademark then you can take action under infringement of trade mark. However as there is no trademark therefore action can be taken under tort of passing off. You can take action on the basis that your brand is being utilized by others. You can calculate your loss and file a lawsuit demanding compensation and injunction against other party. Passing off is a common law tort which can be used to enforce unregistered trademark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill.

AFF

[Lexus]

If your logo is being used in an unauthorized way, write a cease and desist letter to protect your property. Explain why you are writing the cease and desist letter and state the name of the work that was infringed upon. Seek the assistance of an attorney if you do not hear back from the person within the allotted time.

[kate]

Thanks for the responses. A couple more questions:

- Does anything change since we are in Mexico?
- I am fairly certain that they would ignore a cease and desist letter. They have a lot at stake and in Mexico very few laws are enforced. If they ignore it, what would be the next step and would it be worth it?

Thanks again in advance. This is a wonderful forum.