Trademark phrase issues

[Jeanrouge]

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

Hello everyone and thanks in advance for any help in this matter.

I have a company that makes online software and apps. Our PC and Mac software has no problems with its name, but in October 2014 we created iPad Apps and gave them a specific name that now apparently is in conflict with another's company name. Their Apps are not named the same way but they do have a Pc and Mac product named the same as our Apps.
About a month ago I received a notice from their lawyer to cease and desist from using that name for our Apps and In May 2015 they submitted for a tm. The name they are asking a trademark for is descriptive of the product but since they have been using it for a long time they claim their mark will be accepted.
They claim says that confusion could bring their customers to mistakenly purchase our software over theirs. We find that to be an outrageous claim as on the App store doing a search on the name only shows our product with our distinctive logo and company name. Their Apps are not shown at all.
This company is a giant in the field and we feel their real goal is to make our life miserable because they are threatened by our product, which is much better than theirs. We are a start up company and don't have large sums of cash to get into a legal battle. We do not wish to change our product name and are seeking advice.

 

[quincy]

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

Hello everyone and thanks in advance for any help in this matter.

I have a company that makes online software and apps. Our PC and Mac software has no problems with its name, but in October 2014 we created iPad Apps and gave them a specific name that now apparently is in conflict with another's company name. Their Apps are not named the same way but they do have a Pc and Mac product named the same as our Apps.
About a month ago I received a notice from their lawyer to cease and desist from using that name for our Apps and In May 2015 they submitted for a tm. The name they are asking a trademark for is descriptive of the product but since they have been using it for a long time they claim their mark will be accepted.
They claim says that confusion could bring their customers to mistakenly purchase our software over theirs. We find that to be an outrageous claim as on the App store doing a search on the name only shows our product with our distinctive logo and company name. Their Apps are not shown at all.
This company is a giant in the field and we feel their real goal is to make our life miserable because they are threatened by our product, which is much better than theirs. We are a start up company and don't have large sums of cash to get into a legal battle. We do not wish to change our product name and are seeking advice.

If you received a cease and desist notice, you have two choices - to cease and desist, or to not cease and desist. The first comes with no legal risk and the second comes with the possibility of a costly lawsuit. A company that is a "giant in the field" is more likely to assert their rights in a name, logo or slogan - whether they own the rights or not.

Descriptive marks can become strong trademarks over time, when the consuming public starts connecting the name with the specific product or service, and can therefore be eligible for placement on the USPTO's Principal Register. Arizona Iced Tea and Kentucky Fried Chicken and Shake 'n Bake are three descriptive marks that now serve to distinguish these products from those of others. Whether the other company can demonstrate that their descriptive mark has gained a "secondary meaning" in the marketplace and that consumers recognize the mark as identifying their product, enough so that it is accepted for registration on the Principal Register, depends on all sorts of facts and factors. If the company has used the mark in commerce for a long time, however, that works in the company's favor.

If you want to keep the trademark as an identifier for your app but you do not have a lot of cash to support a legal battle, you would be smart to invest at least some of your available cash now, and have your mark and the other company's mark checked out by an IP attorney in your area. The professional review will give you a better idea if you can stand up to the other company and legitimately claim rights to the mark, or if you should cease and desist the use of your mark as demanded by the other company. The attorney you see can respond to the other company's notice based on what is determined after the personal review.

Good luck.