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Trademark, Domain Scenario

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interested32

Junior Member
What is the name of your state (only U.S. law)? I live in Canada

Here is the example scenario:
-I have a domain and successful website ABC.ca founded in 2002
-I have been selling products with reference to ABC.ca for some time.
-Incorporated my company ABC xyc inc in 2010
-ABC.com became available recently and I purchased it.

'ABC' has been trademarked by a US company sometime in 2008

I believe I have rights and there shouldn't be a problem to use ABC.com as I had owned ABC.ca and also my company name is ABC xyc inc but in canada.

Any advice would be extremely helpful.
 


quincy

Senior Member
Actually, there are a lot of "it depends" in any answer I can provide, and trademark law is far too complex to discuss in much depth in a forum post. If your hypothetical example reflects your real business concerns, you would be wise to sit down with an IP attorney in Canada for advice tailored specifically to your needs. All of law relies on the particular facts presented in a situation.

That said, and most basically, trademark rights are established in any country based on that country's trademark laws. These laws vary from country to country, often in significant ways. There is no one-size-fits-all international trademark law.

There is, however, the Madrid Protocol, an international treaty that allows, for example, a U.S. trademark owner to file a single application for registration of their trademark with the United States Patent and Trademark Office (USPTO) and with member countries at the same time. Your Canadian "ABC" trademark rights, then, could potentially depend on what rights, if any, the U.S. "ABC" has established through commerce in Canada and through the registration of their mark with the Canadian Intellectual Property Office.

If the U.S. ABC has not registered their trademark in Canada or has not conducted business in Canada under the ABC name, and if you have not registered your ABC trademark with the USPTO in the U.S. or conducted business in the U.S. under the ABC name, both ABC trademarks would generally be able to peacefully coexist, as long as the ABCs remain in their home countries.

This peaceful coexistence, however, precludes you using your trademark on your products or services in the U.S. and precludes the U.S. company from using their trademark on their products or services in Canada. For either of the ABC's to do business in their neighboring country, they would have to do it under another name, so as to not infringe on the trademark rights already established by the other company in the other company's home country. In other words, the U.S. ABC could market their products or services in Canada under the new name DEF, but not under their U.S. name of ABC. And this is all assuming the products and services are similar enough that the use of the same names would cause consumer confusion. The two Apples are able to use the same name because their products and market are different.

As a note, in the U.S., trademark registration is not a requirement to determine ownership of a mark. The mark is (generally) owned by the first to use the trademark in commerce. I believe this is true in Canada, as well, although this is not the case in all countries. In some countries, ownership depends on registration - so if a company were to use an unregistered mark in commerce for 10 years, but some other company comes along and registers the same mark, it is the company that has the registered mark that owns the trademark.

I hope I have covered this sufficiently.
 
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interested32

Junior Member
You have, and I never expected such a complete well thought out answer. Thank you so much, this forum is a gold mine for users.

This sounds extremely 'complicated' as there are so many if scenarios... I have no intention of going after them and I hope it is the same way the other way around as we do not compete at all (completely different verticals).

What I found interesting was that when I searched for ABC in the database it came up active 3-4 times at the same time. I find that interesting that you can do that.

I have not registered ABC but I also thought that it was the first person to do business with the name that 'owns' it. It's like domain squatting but for trademarks.

I don't see this becoming an issue as we are not competing, but I am glad you put my mind at ease (somewhat).

I guess the only remaining concern is that I have visitors from the US and sell an app in the US itunes app store with ABC xyc inc. Regardless, it sounds like it wouldn't be a clear cut case for anyone.
 

quincy

Senior Member
There are several ABCs in the U.S. that exist without trademark infringement issues (ABC News and ABC Warehouse, for two) and as long as the products, services and/or markets are not so similar as to confuse consumers, there is generally not a problem with "shared" trademark names.

Most consumers are bright enough to figure out that the American Broadcasting Company does not sell refrigerators and washing machines. ;)

That said, filing lawsuits is a popular American past time, so you never can tell what will spawn one. It is often wise to have an attorney review any matter that you fear could put you or your company at risk.

Good luck with your app.
 
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