mark321 — 2010-07-16T12:40:57-04:00 — #1
I came up with a name I really liked and obtained the domain. I just found that a company exists with the same name but with a different ending. Will I be infringing on their trademark if I do business? They do web design as well.
For example, let's call them Carrot Studios. If I am Carrot Media, would there be any issue? I don't think it will cause any confusion and it's not like I'm using their name 100%.
This particular firm also goes by just the first part of the name (Carrot, as an example) and have a TM sign next to it presumably thinking they will own that word which is just a noun ie a real word. I don't think they have any right to it.
But then again there is Apple, but I guess they would be an exception due to fame.
Anyway, if anyone has any feedback or advice I'd REALLY appreciate it. I don't have money for a lawyer. Thanks in advance!
papergirl — 2010-07-21T21:32:21-04:00 — #2
i have this same problem,
i have a trade mark registered as "something" graphics
the lawyer that registered the trade mark for me said that "graphics" isn't included in the trademark because this is a service i offer.
and "something" is what is trademarked. (even though the trademark is listed as "something graphics")
I have just found someone advertising as "something designs" in the same classification that i have the trademark registered for.
he said i can get them on a breach of my trade mark.
is this correct?
( "something" is replacing the real trademark name that i dont really want to disclose")
ted_s — 2010-07-17T06:05:15-04:00 — #3
They can sue you for lost business, harmimg their good name, causing consumer confusion, etc... Whether they win anything or not is another issue, but the cost of defending it, even if only for a discovery round, would not be fun.
Just because they generally ask first doesn't mean they have to.
mark321 — 2010-07-16T15:14:34-04:00 — #4
If I comply and give up the right to use the name, what can they sue for though and for what basis to impose legal fees?
attorney_jaffe — 2010-07-16T14:59:28-04:00 — #5
The worst thing that can happen is to be dragged into a legal conflict. Legal fees are often worse than the penalty you face.
Trademark issues are usually heard in Federal court. We have all heard the expression "Don't make a Federal case out of this." Well, the expression finds its origins in the cost of a Federal case which is usually about 50% more than a state court case.
A client who is being sued in Federal court in a trademark case could be looking at legal fees of over $10,000 just to roll over and play dead. A client who wanted to defend themselves and try to win could be looking at $50,000 to $100,000 in legal fees.
mark321 — 2010-07-16T14:08:02-04:00 — #6
Thanks for the response. I didn't want to share so IN CASE there is some issue in the future this thread won't be found and used against me.
Out of curiosity, what is the worst thing that can happen if there is a trademark issue? If I am that unfortunate and they go all out against me, can I be sued? Or just hand over the domain name to them and fully cease operations under that name without any monetary penalty?
I can live with re-branding my business in this line of work.
I am also curious about all the trademark fear mongering online. I mean, I never really heard of any small business having trouble. It's usually some very famous or multinational corporation who goes after any domain that includes their name.
attorney_jaffe — 2010-07-16T13:41:33-04:00 — #7
There is no short answer to this complicated question. Domain names and trademark issues are not just confusing to you, but also confusing to the courts. Just this month, the same appealate court judge issued conflicting opinions on the use of trademarks in a domain name -- eVisa.com not allowed and buy-a-lexus.com allowed.
His rulings rely on razor sharp differences in how the names are protected and how the domains are used -- as well as what the web sites offer.
Looking at your post, I cannot advise you because you do not wish to share the exact names of the companies and domain names. Further, even with these names, advice is going to depend on the nature of the web sites themselves.
attorney_jaffe — 2010-07-22T12:45:15-04:00 — #8
It sounds like your attorney is giving you the correct advice, and since he is the one who has all the facts, I wouldn't doubt him.