Trademark Infringement Question

[twirlygirl]

What is the name of your state (only U.S. law)? NJ

Do I have to change my Facebook vanity url: (Example only) h**p://www.facebook.com/abcgirl just because a company named ABC Girl their official site: (Example only) h**p://www.abcgirlshop.com claims to own the trademark for this name?

When I look up their trademark info the Wordmark is: ORIGINAL REVERSIBLE (Example Only) ABC DRESSES

Company Name: (Example Only) ABCGIRL LLC

I did however look it up again and now I see another trademark report. The Wordmark is: (Example Only) ABC not ABC Girl

I have been using this name for years now. My online presence goes as far back as 2004 or 2005 maybe even earlier.

Their trademark filing date is: 12/6/2011

Should I simply ignore their request and let Facebook decide?

Can I be forced to change it?

Are there any legal ramifications?

Facebook started offering these vanity url's to their users on June 13, 2009 at 12:01am. I claimed this vanity url on the actual launch date (2009).

I did not claim my vanity URL recently I have had it since 2009. I don't want to be inconsiderate but I don't feel I should have to change my online identity just because theirs is the same.

Please advise

 

[quincy]

What is the name of your state (only U.S. law)? NJ

Do I have to change my Facebook vanity url: (Example only) h**p://www.facebook.com/abcgirl just because a company named ABC Girl their official site: (Example only) h**p://www.abcgirlshop.com claims to own the trademark for this name? ...

Should I simply ignore their request and let Facebook decide?

Can I be forced to change it?

Are there any legal ramifications?

Facebook started offering these vanity url's to their users on June 13, 2009 at 12:01am. I claimed this vanity url on the actual launch date (2009). ...

How were you notified of ABC Girl's claims and request?

It is possible you could be forced to change it, yes.

 

[twirlygirl]

The owner of the company sent me a Facebook message. The message was not nasty but they made sure to mention that they have the trademark and asked if I would be willing to change it. I haven't replied. I figured in the end that if they want it that bad. They could take it up with Facebook. I think in all honesty it is wrong. But I don't want to be a jerk. My take is that I have been using ABCGIRL for years now probably a lot longer than they have.

When I think of it for their branding purposes their site is abcgirlshop.com why can't they keep with their site URL as to not confuse their customers. I think it is silly sigh. Their word mark is for abc not ABCGIRL.

I am not squatting I got that vanity URL on Facebook's date of first launch.

Still debating if I should reply or just ignore.

 

[single317dad]

I wouldn't reply until I was confident in my legal position.

While you may have an argument for prior use, it could be quite costly to defend that in court. How important is this to you? How much do you actually use this name? (e.g., do people contact you at [email protected], do you have business cards or advertising using your url)

Changing the Facebook username may not be as simple as it sounds. Some report that they can't change theirs at all (as Facebook policy claims), some can change it once, and others claim they've changed it multiple times. Facebook policy requires that your username contain your name in some form (though few abide by that rule.) Does yours?

 

[twirlygirl]

Not sure why it's not letting my replies go through..But it is important to me because all my social media accounts go by ABCGIRL. If they are allowed to get it changed on Facebook where will it end? Even my email goes ABCGIRL. I dont have any business cards I simply use this name and for many years as an online identity.

 

[quincy]

Not sure why it's not letting my replies go through..But it is important to me because all my social media accounts go by ABCGIRL. If they are allowed to get it changed on Facebook where will it end? Even my email goes ABCGIRL. I dont have any business cards I simply use this name and for many years as an online identity.

Does your user name contain your real name?

Depending on the actual names used, the trademark holder could have the ability to have your URL name terminated so as to not infringe on their rights - but I am not sure how likely this is to happen, based on what you have written here. It really depends on the specifics.

If all you have received is a request to change your name and nothing more, then you have the luxury of waiting to see what happens. The worst I see occurring is that you will have to change the name - but whether the trademark holder can legally force the change is a question mark. I tend to doubt it.

 

[twirlygirl]

In terms of Facebook...I am using the vanity url of ABCgirl and when you reach that url it is my profile with my real name. I only have the vanity portion of it set to that ABCgirl. All my other social media accounts and email I go by this ABCgirl username. In twitter for example I use a slight variation of it ABC_GIRL because the username was taken. Btw, when I search the ABCgirl username I am truly not the only one who uses it. In fact, I have even found abcgirl.(com) and it seems to be in use by some random weird website. I am not trying to be difficult with these people. But it just frustrates me and ultimately I believe if they submit it to Facebook based on infringement. I am the one who loses it because they do hold this trademark. I have no malice and I requested that vanity URL long before their business was even started.

Thank you for your replies

 

[quincy]

In terms of Facebook...I am using the vanity url of ABCgirl and when you reach that url it is my profile with my real name. I only have the vanity portion of it set to that ABCgirl. All my other social media accounts and email I go by this ABCgirl username. In twitter for example I use a slight variation of it ABC_GIRL because the username was taken. Btw, when I search the ABCgirl username I am truly not the only one who uses it. In fact, I have even found abcgirl.(com) and it seems to be in use by some random weird website. I am not trying to be difficult with these people. But it just frustrates me and ultimately I believe if they submit it to Facebook based on infringement. I am the one who loses it because they do hold this trademark. I have no malice and I requested that vanity URL long before their business was even started.

Thank you for your replies

I wouldn't worry about it. The likelihood of a suit over your vanity url seems to be slim to none. And, if the name ABCgirl and its assorted variations are common, then there is probably nothing the trademark holder can do to prevent its use by others who have used it previously in a noncompeting way.

Even with trademarks, there are many companies, products and services with shared or similar names that do not infringe on trademark rights and that can and do peacefully coexist in the marketplace.

Again, the worst that can happen is that you will have to change the name - and this you could potentially fight if the name is that important to you and you want to spend thousands and thousands of dollars to do so.

You can always run this by an attorney in your area who can review the particulars and who can advise you, based on these particulars, what your best options are. I personally do not see this as being worth the expense, however.

Good luck, twirlygirl.

 

[twirlygirl]

thanks again for your input. I am simply just going to ignore their request/message and if they want it. I will let them take it up with Facebook.

 

[quincy]

thanks again for your input. I am simply just going to ignore their request/message and if they want it. I will let them take it up with Facebook.

Sounds like a plan.

Good luck.