I don't agree. It's not dilution if you give permission; the company printing "Kleenex" on kleenex boxes is not diluting the trademark. They have permission to use the trademark in the course of their business relationship.
But just so we're not arguing about the specifics of trademark law: I think you should throw away all your legal rights to a trademark if retaining those rights means you have to be a bad person.
In this case where both names are common English phrases, I think it's especially shady to be so aggressive about enforcement. I doubt either would win against the other, in fact, but I don't think it should come to that either.
That's not a good analogy. A better one would be if the Kleenex people reached a deal for a second company to market its tissues as "Cleenecs". My understanding is that that would make it easier for a third company to come along and use "KKleenXXX" -- they could argue that the word was becoming a generic term. (Trademarks can be lost if they wind up being used generically. Examples include "aspirin" and "elevator".)
But fine, let's leave the legal questions aside since neither of us is an expert.
I don't concur with your assessment of the ethicalities of the situation. Who's Here was up first and Hamachek knew about it. He could have picked a clearly different name, but did not.
That's not how it works. The second company would pay Kleenex for a license to use the trademark. This does not dilute the trademark, in fact, it actually strengthens it. The third company, which does not take out a license, would be subject to trademark lawsuits by Kleenex.
> I think you should throw away all your legal rights to a trademark if retaining those rights means you have to be a bad person.
That's noble, but bad for business. When you have to make a tough call like this at the helm of your own company, if you come from the heart (like that attitude), you're going to lose. It's unfortunate that the world has developed the way it has, but it's also just about impossible for a tactical shift at this point: heart has no place in business, and those who can successfully use their heart in business had to be very, very careful in how they did so. And they weren't always the cleanest, either.
I appreciate your honesty and your position here, but "that just isn't the way business works". You'll get taken advantage of, thinking like that, because not everybody has the same heart you do. Sucks, but is.
You're talking about a "license" for which the licensee is paying the trademark holder a royalty for the right to use the trademark. It's quite common, especially in the startup world.
But just so we're not arguing about the specifics of trademark law: I think you should throw away all your legal rights to a trademark if retaining those rights means you have to be a bad person.
In this case where both names are common English phrases, I think it's especially shady to be so aggressive about enforcement. I doubt either would win against the other, in fact, but I don't think it should come to that either.