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Similar Product Names Question

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Akael

Junior Member
What is the name of your state (only U.S. law)? Texas

I received a notice regarding a business in New York who has a software product of similar nature to a software product that I developed and have been selling for the past few years.

This other company has trademark on their product name, and according to the letter their attorney sent they think we are trying to deceive their customers to purchase our product instead of theirs.

Now, up until this point we have not sold our product to any customers outside of about a 100 mile radius of our town, and as far as I can tell nobody in our area has ever even heard of their product before.

As a matter of fact, when we first created our product we did extensive research into the market to determine who our competitors would be, and never came across their product at all.

The first I ever heard of their product was this letter they sent to us.

Our product name is shorter than theirs, and is basically just missing 2 extra letters that they use that we do not.

Anything I can do to protect my product name, and business from liability?

I would understand the problems if we knew in advance about the existence of their product, but we did not. I even called a few other people I know in the same industry and they had never heard of the other product.
 


justalayman

Senior Member
Anything I can do to protect my product name,
not really. what is done is done and whomever proves to have the rights has the rights to the name. The other should, if wise, cease to infringe on the others TM.

and business from liability?
quit selling the product under that name.



somebody will have to determine who has the rights to the name and if they do, is your name close enough to cause confusion. Apparently the other company believes they have the rights to the name and yours does cause confusion.

so, you can either dispute the claim (either by action or ignoring them). If they believe they are correct and are willing to sue to prove it, expect a summons and complaint in the future.



You can accept their claim and change your name

so, when did they first use their name is business use and when did you first use your name in business use?
 

Akael

Junior Member
so, when did they first use their name is business use and when did you first use your name in business use?
They registered their domain name in 2001, we registered ours in 2007.

We stated using the name for the product in 2006, I have not idea when they started, but like I said before, many searches for products in the industry where completed when we chose the name, and never did their name show up at the time.

I don't contest that that they may have been using their name first, but the names are not the same. They are similar, and the products serve a similar need, but without intent to infringe on their product do we really have to change our product name?

By the way, we have multiple State contracts for our product, and changing the name may cause us to have to modify them as well as all of our other social media accounts.

By looking at their Twitter for example they have less than 30 followers, and they are following them all. We have well over 100, and are not following most of our followers. (Theirs appear to be employees and family members, ours are businesses in the industry.)

We are are listed in Twitter list of the industry products that meet this particular need, they are not.

If they decide to proceed against us what do we risk losing other than the name? According to the way the letter is worded they act like they own our product including source code?
 

justalayman

Senior Member
bottom line; you can argue your name does not infringe and/or you can argue you used the name first in commerce.


If they will back down, nobody knows.
 

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