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Is this infringment?

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seamonster

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

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

Hi everyone, first time poster here :eek:

I own I own a trade mark for my business name. it is a 2 word name.

Then I found this guy who runs the same type of business with my same 2 letter name, except he has the words "services", "&", and "Inc" at the end. He offers the same service as my company but in a different state.

This is confusing my customers. They look for me online, they find him, see that he is not in my state, and move away from my company.

So is he infringing? If so, can I send him a friendly letter?
If you need to see my copy right info and business names, please feel free to PM me :)
 


quincy

Senior Member
Generally, the first to use a trademark in commerce would be the owner of the mark.

The first user of a trademark could potentially prevent the use of this mark by others, if the trademark is used to identify the same or a similar business, product or service, the geographical market for the product or service is the same, and there is consumer confusion, or the likelihood of consumer confusion, over this dual use.

If an entity has registered a trademark federally and this mark is placed on the USPTO's Principle Register, then the entity with the registered mark will be the presumed owner of the mark.

If an entity has registered a trademark federally and this mark is placed on the USPTO's Supplemental Register, there is no presumption of ownership but the entity with the registered mark is entitled to use the ® symbol, to ward off all uses by others of the mark.

It is possible, and actually quite common, for two businesses to operate using the same name. If they operate in different geographical areas and/or if the businesses offer different products or services, there is little likelihood a consumer would be confused by the dual use. But, if these businesses are offering the same or similar goods and services and are competing in the same market, then the first one to own the trademarked name can challenge the use of the name by the other business and potentially stop the competing business from using that name.

If a trademark has become famous (is recognized widely as the identifier of a particular company, product or service, like the trademarked names Disney and Pepsi), then the owner of the famous trademark can potentially prevent the use of the mark by others on any goods or services, competing or not.

With the internet, many businesses now have an online presence and the same or similar names can make consumers think that one business is another. With this consumer confusion and both businesses operating with the same name outside their own states (perhaps through online sales) then what once was peaceful coexistence between the two when they both confined their business operations to their own states could lead to a trademark dispute.

The questions you need to answer to determine if this other business is infringing on your trademark rights are these:

When was your two-word trademark first used to identify your business and when did the other business first use the mark to identify their business?

Do either you or this other business have the trademark registered with the USPTO?

Do either you or this other business have the trademark registered with your states?

I suggest you first find out more about the company using the same name as your business before you draft any letter to this company. You could find that it is not the other business that is infringing on your rights but rather you that is infringing on their rights.
 
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justalayman

Senior Member
quincy, along with all the brilliant info you have provided, is it possible to expand on something you mentioned?

The OP states they are not in the same geographical market but, due to the internet, there is still confusion. Since they both advertise on the internet, is it possible to consider their market anyplace the internet is viewed rather than the actual physical market each of them might serve?

Since the OP mentions "service" in his statement, I would think his service is something to where he cannot carry out business over the internet and may not be able to easily argue market area but what of business that sell merchandise? It can be sold over the internet so basically, the world is their market.

Has there been any defining actions, cases, or such that would help settle the issue?
 

quincy

Senior Member
I have not asked for seamonster to provide the name of his business or what sort of service his business provides (although he offered to do just that in his first post). Not knowing this information does make it more difficult to determine what, if any, action seamonster can take against his competitor. And it also means that what is provided here is the most basic of information. seamonster will want to consult with an attorney in his area for advice tailored to his specific facts.

Without the name of seamonster's business, I am only guessing that it is a name that is protectable under trademark law. If seamonster and his competitor both have cleaning services and the names of their businesses are "Cleaning Service," the name is not only not protectable under trademark law, any infringement suit he might consider would be an exercise in futility. ;)

With that said, the answer to your last question, justalayman, is "no." There are plenty of cases involving internet trademark infringement claims, but none to my knowledge that actually settle anything. Courts have been defining and applying the Lanham Act's "use in commerce" in different ways.

One case that is most often cited by courts in internet infringement cases is, however, Planned Parenthood Federation of America, Inc v Bucci, 42 USPQ 2d 1430 (S.D.N.Y. 1997), an internet "parody" action. The Court here said that "use in commerce" includes establishing a home page on the internet for access by consumers.

From Planned Parenthood Federation of America, Inc: "The activity involved in this action meets the 'in commerce' standard for two reasons. First, defendant's actions affect plaintiff's ability to offer plaintiff's services, which, as health and information services offered in forty-eight sates and over the internet, are surely 'in commerce.' Thus, even assuming, arguendo, that defendant's activities are not interstate commerce for Lanham Act purposes, the effect of those activities on plaintiff's interstate commerce activities would place defendant within the reach of the Lanham Act....Second, Internet users constitute a national, even international, audience, who must use interstate telephone lines to access defendant's website on the Internet. The nature of the Internet indicates that establishing a typical home page on the Internet, for access to all users, would satisfy the Lanham Act's 'in commerce' requirement."

New West Corp v NYM Co of California, Inc similarly held that advertising and pre-sales even with no sales was "use in commerce" and could establish trademark rights.

But then other courts have held as the Court in Buti v Perosa, 139 F.3d 98, 105 (2nd Cir 1998), stating that advertising and promotion on a website, unless accompanied by sales or services, was not sufficient to show "use in commerce." In other words, these courts have said that trademark rights are not established merely by having an advertising website on the internet.

A few other cases that may hold some interest for their discussions on this are:

CCBN.com, Inc. v C-Call.com, Inc, 1999 US DIST LEXIS 18187 (D. Ma. 11/18/99).

Shade's Landing, Inc. v James C. Williams, US DIST LEXIS 19782 (D. Mn 12/22/99).

Green Prods. Co v Independence Corn By-Prods, Co, 992 F.Supp 1070 (N.D. Iowa 9/25/1997).

As an additional note, a court looks at several factors when deciding if a use is infringing or not. The most important factor will be if there is evidence of consumer confusion and/or if there is a likelihood that consumers will be confused by the same or similar trademarks. Other factors will include proximity or geographical locations, the market for the goods and services, the similarities of the goods and services, the strength of the mark (how well it is recognized by consumers), and the degree of caution used by a typical consumer.

Internet trademark infringement disputes, by the way, are mostly arising over domain name uses. But trademark infringement suits have been increasing in general, as the internet has made it possible for someone operating a business in Maine to know about a same-named company in Arizona. Before the internet and website advertising, these competing businesses often did not know the other existed.
 
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