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Company with similiar name claims infringement on their trademark

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Roaky

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

I am a college student and have been operating a small computer repair company locally to make ends meet. I have a few small offices as clients, several individuals, and some occasional new work that pops up. I registered as a sole proprietorship and filed a fictitious name about three years ago for my work.

Recently I received an email and letter from a lawyer representing a company with a similar name that is demanding that I cease operating under my current name and let my domain expire. My company is *blank* computer technologies (I don't want to share the exact name for anonymity's sake, but its a common noun, I've seen dozens of other businesses with it). The company with the trademark is named *blank* electronics. I do PC and laptop repair as well as regular networking, they are an international provider of cables and high end server infrastructure equipment apparently. My domain is *blank*computertechnologies.com and theirs is *blank.com. I am in Florida, they are located in Colorado.

They claim to have had their trademark since the 40's.
As our names are significantly different overall, our business types and scales are completely different, and considering that I have no resources worth suing for do they have a significant case against me?

Would contacting their lawyer and explaining my position and intent benefit me or weaken my position? Should I offer to sell the name and domain to them for a few hundred dollars?

I named my company after my dog, who is in turn named after a character in a movie from the 80's (again its a common noun, not a proper noun). I had no idea this company existed. They claim my similar name was deliberately intended to obstruct or steal their business.

I can provide more information or excerpts from the email. I appreciate any information that you can provide, this is a stressful occurrence for me, and I feel like a big company is just trying to bully the little guy.
Thank you in advance for any that reply.
 


FlyingRon

Senior Member
I don't think it would affect things one way or another. Tell them you do not view your use as infringing. It's easy to send cease and desist letters, a bit more involved if they want to sue you for infringing the mark, which you have a good chance of prevailing.

If they want to file a dispute over the domain name, that's easier, but I'd answer with your registration documents, a description that you have SERVICE MARK rights to your name, and that you are not in bad faith squatting on the domain.
 

OHRoadwarrior

Senior Member
It would be far cheaper for you to change the company name and website. Relink to your new website from the old one if it gets several hits. They may let that go. Your alternative is to not change and spend thousands on attorneys defending the name.
 

quincy

Senior Member
It does sound a bit like the big company is trying to bully the little guy here, Roaky.

If you don't have a lot invested in your own company and a large client base after your three years in operation, then you may wish to consider OHRw's suggestion and start all over, but based entirely on what you have presented as facts, I am not seeing that this other company has much of an infringement action they can pursue against you. The cease and desist might just be this company's way of showing their muscle - and sending a cease and desist letter is the easiest and the cheapest route a trademark holder can take to enforce his trademark rights.

There are many similar domain names on the internet (check out the number of "executive" domain names, for example) and this is generally not a problem. If a company's trademarked name is famous, then it can lay claim to using its own trademarked name in domain names and prevent others from using even a similar name (ie, Coca-Cola can prevent others from using Coca-Cola or variations thereof), but there are really not that many famous names that can exert that type of trademark control over a domain name.

If it would cost you more to change everything than it would to purchase an hour of an IP attorney's time, then I suggest you review all of the facts with the attorney. After a review of the specifics in your case, the attorney may suggest that you draft a response to the company's C&D that indicates you are calling their bluff.
 
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Roaky

Junior Member
Reply

Thank you everyone for your replies. I think I am going to send them the following letter, and if they still want to bully me maybe I'll cave. Please let me know what you think-

To whom it may concern,
While I understand and appreciate your concerns over upholding your trademark, I believe your concern is misplaced.
I have never heard of *blank* Electronics, Inc. In fact my business is named after my dog, who in turn is named after a character in the 1971 animated production “The Point” (The Point (TV 1971) - IMDb)
I congratulate *blank* Electronics on their success in their specific field, but *blank* Computer Technologies shares only between 1/3 and 1/5 of your name, and operates in an entirely different field.
*blank* Computer Technologies provides home and small office IT support for PC’s, Laptops, printers, and simple networks.
*blank* Computer Technologies currently does not and has no plans to: Manufacture or sell electronic components such as those that *blank* Electronics produces or sells, Manufacture or sell cables or connectors, operate a retail location, design software, design inventory control systems, or take part in any of your current practices listed in your letter. Furthermore *blank* Computer Technologies has no intention of operating internationally, or outside of the state of Florida. Along these lines I currently see that in the trademarks listed in your previous correspondence there is no mention of Computer Repair, or IT Services.

I am the owner and sole technician of *blank* Computer Technologies. *blank* Computer Technologies currently has only a half dozen or less small offices as clients, and 10-12 home clients. The company has no operating capital to speak of, and individually the only asset of which I possess is student loan debt. I am a college student and operate *blank* Computer Technologies as part time work to offset my school and living costs.

Currently the domain http://www.*blank*computertechnologies.com exists solely as an informational site for my business, its theme and content are significantly different from *blank* Electronics, and our logos are in no way similar. Out of common courtesy I am willing to post a disclaimer on my home page along the lines of “*blank* Computer Technologies is in no way associated with *blank* Electronics, Inc.”, though considering the difference in scale of our business and clientele, and the quality of our respective websites I do not see the possibility of our respective clients confusing the separate businesses and separate names as at all likely.

If you do insist on the removal of the web domain that I own and operate, as well as a halt to the operations of my business under the name *blank* Computer Technologies, despite the clear non-infringement of *blank* Electronics trademarks and business practices, I will be willing to sell both the domain and the fictitious name to *blank* Electronics for a very reasonable amount to cover the purchase of a new domain and promotional materials.
Thank you for your correspondence, best of luck to you in your specific field of operations.
 

asiny

Senior Member
LOTS OF WORDS
Don't send that letter. You owe them no explanation.
To whom it may concern, [if you received a letter from the firm, or an attorney at the firm, address them]
While I understand and appreciate your concerns over upholding your trademark, I believe your concern is misplaced.
I have never heard of *blank* Electronics, Inc. In fact my business is named after my dog, who in turn is named after a character in the 1971 animated production “The Point” (The Point (TV 1971) - IMDb) [not necessary and unimportant]
I congratulate *blank* Electronics on their success in their specific field, but *blank* Computer Technologies shares only between 1/3 and 1/5 of your name, and operates in an entirely different field.[you are making an argument for them that your name DOES have similarities. DON'T]
*blank* Computer Technologies provides home and small office IT support for PC’s, Laptops, printers, and simple networks.
*blank* Computer Technologies currently does not and has no plans to: Manufacture or sell electronic components such as those that *blank* Electronics produces or sells, Manufacture or sell cables or connectors, operate a retail location, design software, design inventory control systems, or take part in any of your current practices listed in your letter. [the company also does EXACTLY what you offer. Don't give them this information. Just because you do what they do- is meaningless and unimportant to mention.]
Furthermore *blank* Computer Technologies has no intention of operating internationally, or outside of the state of Florida. Along these lines I currently see that in the trademarks listed in your previous correspondence there is no mention of Computer Repair, or IT Services.[Just because the attorney never mentioned it, does not mean you are in the free-and-clear because of that. They DO offer repair and IT services- that is a large part of their business. Try reading the website for the company which, by the way, is headquartered in NYC nor Colorado. That could just be the reference location the attorney is writing on behalf of.]

I am the owner and sole technician of *blank* Computer Technologies. *blank* Computer Technologies currently has only a half dozen or less small offices as clients, and 10-12 home clients. The company has no operating capital to speak of, and individually the only asset of which I possess is student loan debt. I am a college student and operate *blank* Computer Technologies as part time work to offset my school and living costs.[Why not just let them know you have no money and they could drown you in legal paperwork to the point that you would lose your name anyway?]

Currently the domain http://www.*blank*computertechnologies.com exists solely as an informational site for my business, its theme and content are significantly different from *blank* Electronics, and our logos are in no way similar. Out of common courtesy I am willing to post a disclaimer on my home page along the lines of “*blank* Computer Technologies is in no way associated with *blank* Electronics, Inc.”, though considering the difference in scale of our business and clientele, and the quality of our respective websites I do not see the possibility of our respective clients confusing the separate businesses and separate names as at all likely.[This is probably the best thing you can offer under the circumstances. As Quincy posted, it seems a large company trying to bully.]

If you do insist on the removal of the web domain that I own and operate, as well as a halt to the operations of my business under the name *blank* Computer Technologies, despite the clear non-infringement of *blank* Electronics trademarks and business practices, I will be willing to sell both the domain and the fictitious name to *blank* Electronics for a very reasonable amount to cover the purchase of a new domain and promotional materials.[You have already told them you have no money.. why should they pay your asking price? What do you feel is reasonable to "re-brand" what you have built?]
Thank you for your correspondence, I look forward to hearing from you.[You could also give them a deadline to respond and, if they do not respond by a specific date, you will consider this matter closed.]

Whatever you decided to do be sure to send ANY correspondence, NOT BY EMAIL, by registered (signed) delivery confirmation. Send it through the method to get to them within a reasonable time- especially if you decided to give them a deadline to respond.
Either rewrite or get in touch with an attorney who can word a better response that get's straight to the legal point. This may also help in showing them that you cannot be bullied because they feel your name infringes theirs.. which it does not.
 

ustex

Junior Member
Before anything else go to the USPTO site and do a simple search for their trademark. That way you can see if it is indeed registered, when it was registered and all the classes of products or services that were approved for use. Use this as a starting point to evaluate possible infringement.
 
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