Someone is trying to steal my brand?

[hekx]

Utah ( United States )

I have been running my graphic design business for about a year in a half. About 3-4 months ago I created a trademark that was awesome. I then registered a domain name (.net) and checked the (.com) for content.
At that time the (.com) was blank, I did a quick search on the USPTO and also did not find any registered trademarks claiming ownership of the brand in my field of work.

Now that my website has been up and getting traffic and a few customers... I checked the (.com) to see if it had expired yet so that I could buy it. What I found is that the owner appears to now be trying to claim ownership of that name in the field of graphic design.

They show the same name (although not my logo) and claim it is registered. The website itself is illegitimate, they have supposed examples of their work but no contact information. This website was clearly thrown up in a hurry, most of the links do not even work.

Any help would be greatly appreciated, I worked my ass off on my logo and have been working very long days starting my small business. I am really terrified of not being able to use it or losing it all together.

 

[justalayman]

is your trademark your logo, your name, or a combination of the two?


what area of the country do you consider your market?

Where are they located?

you state they claim their trademark is registered; have you checked that claim?

Any help would be greatly appreciated, I worked my ass off on my logo

are they using your logo? I understood you to say they were not using your logo.

and why didn't you register your trademark(s)?

 

[hekx]

Thank you for the response, they are not using my logo. Just the same name. So to answer your question it is a combination of the two. My logo is custom designed wordmark. I couldn't afford to register my trademark yet and I was moving states from Utah to Oregon in just a couple months so I wanted to wait until then so that I wouldn't have reupdate my mailing address, etc.

So they are not using my exact logo. I did try and look up to see if it was truly registered as they claim and I couldn't find anything.

 

[quincy]

Thank you for the response, they are not using my logo. Just the same name. So to answer your question it is a combination of the two. My logo is custom designed wordmark. I couldn't afford to register my trademark yet and I was moving states from Utah to Oregon in just a couple months so I wanted to wait until then so that I wouldn't have reupdate my mailing address, etc.

So they are not using my exact logo. I did try and look up to see if it was truly registered as they claim and I couldn't find anything.

How is the other user of the name "claiming ownership?" Were you notified by the other user of the name/mark that you were infringing on their rights?

Domain names can be similar. Logos can be similar. Even trademarks can be similar. A problem arises, however, when any of these similarities start to confuse consumers into thinking one company is another. And this consumer confusion is more likely when the trademarks/logos are used to identify the same or similar businesses, products or services - as would be the case with two graphic design businesses operating in the same geographic area.

You need to do several things to determine if your use of the name infringes on another's rights. The first thing is to find out if the other graphic design business has registered their name/trademark with their state or federally (and when they registered) and how long this other graphic design business has used their name/trademark in commerce. If they have registered the name and they have used the name to identify their business longer than you have, you might be forced to change your name or face an infringement action.

Here is a link to the United States Patent and Trademark Office, where you can start your search to see if there is federal registration of the name: http://www.uspto.gov/trademarks-application-process/search-trademark-database

Good luck.

 

[hekx]

They just have a registered symbol next to the name. For simplicity sake lets pretend my website name is colorsfordesign.net and logo is "Colors". When I first registered and built my site, the (.com) was blank. Now that I have had my site running for a bit, the (.com) is no longer blank but also a website that claims to do design. They also have the name "Colors" used as their mark, even though it is not a copy of the logo design for my site. Their site is completely illegitimate, with broken links, no contact information, no business information. All it does it claim to be in design and have registered the trademark "Colors"

 

[justalayman]

so you don't really know who owns this other company or if there really is another company, correct? You need to research the .com website to attempt to ascertain who the owner is and continue your research into the suggestions from Quincy.


http://whois.icann.org/

 

[quincy]

They just have a registered symbol next to the name. For simplicity sake lets pretend my website name is colorsfordesign.net and logo is "Colors". When I first registered and built my site, the (.com) was blank. Now that I have had my site running for a bit, the (.com) is no longer blank but also a website that claims to do design. They also have the name "Colors" used as their mark, even though it is not a copy of the logo design for my site. Their site is completely illegitimate, with broken links, no contact information, no business information. All it does it claim to be in design and have registered the trademark "Colors"

Web addresses do not on their own confer any trademark rights in the names used in the address. In fact, not all businesses have a web presence or sell their products or services online. This does not mean these businesses do not have legitimate rights in their names.

The fact that the other company's website is a bit sloppy or incomplete does not matter. This could only mean they are still working on it. And, while neatness might count when a consumer is making a graphic-design-business hiring decision, neatness has nothing to do with whether a company has rights in a trademark.

What matters to you is that the other design company has, apparently, registered their business name and logo. This means you risk infringing on their rights if you use the same or similar name/logo/domain name to identify your similar design business.

Which symbol is being used next to the other design company's name - ® or "TM?"

Is the other design company a US company?

 

[hekx]

They are using the ® symbol. Like I said, I have looked up anything resembling this and it would appear nothing has been filed. Is it to late to consult with a trademark attorney? The whois lookup fails as it was registered by a 3rd party to protect identity (domainsbyproxy).

 

[quincy]

They are using the ® symbol. Like I said, I have looked up anything resembling this and it would appear nothing has been filed. Is it to late to consult with a trademark attorney? The whois lookup fails as it was registered by a 3rd party to protect identity (domainsbyproxy).

The ® symbol and the words "Reg. US Pat & TM Office" can only be used on federally registered marks. The Lanham Act prohibits others from using these.

So, either the other design company is using the symbol illegally or they have registered their name and/or logo with the USPTO. You should be able to find information about the registration and the registrant through the link I provided above.

It appears that your use of the similar/same name for your design company as the one registered by the other design company is infringing on the other company's trademark rights. If you are infringing in any way - with your design company name, your logo or your domain name - it is possible for the other company to take over your domain name and sue you.

You can have an IP attorney in your area personally review the facts of your use and the other company's use to determine better where you stand legally against any challenge the other company may make.

In other words, it is not too late to consult with an attorney in your area. And, if you have received a cease and desist letter or, especially, if you have received a summons and complaint indicating you are being sued for infringement, sitting down with an IP attorney in your area is not only smart, it is advised.

Good luck.