Trademark infringment

[jjcrawford]

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

I have a clothing line I have been trying to launch for several years now. I have two trademarks through the state of Arizona for the word hooligan and hooligan fight club dating back to 5/1/2006. I recently purchased "hooliganfightgear.com" because the domain finally became available and that is what I wanted to branch out another name of my company. However, I was contacted by a user on fb stating he is the owner and operator of Hooligan Fight Gear, LLC and that I needed to take the picture down or he would seek legal recourse. He stated that he trademarked the name on 4/12/12. I search the United State Patent and Trademark office and saw no trademark. I also purchased the domain on 4/3/12. Does he have any form of a case? Subsequently, can I actually turn the table on him and saying that he's infringing on my trademark considering 2 out of the 3 words on the same and that he's gauging his business in the same field I am? Any help is greatly appreciated. Thanks again.

 

[FlyingRon]

Being listed in the TESS database is nether necessary nor sufficient for trademark rights to exist, nor does what you named your LLCs. The question is whether the two of you have been using the mark in commerce, and whether that mark is likely to cause confusion against the other's trademark rights.

Of course, sending threatening letters is easy. Actually fighting you in court is a bit more involved and constly.

Now internet domains are another thing entirely. Internet domain disputes are not ruled by trademark or any other sane rule of law. All he needs to do is send in his complaint and $100 and he's already likely got a 30% chance of prevailing. The question is whether you have any legitimate right to the name or whether you are merely squatting in bad faith on the domain. Since you have trademarks and a similar company name, and I'd be getting your use in commerce going quickly, you probably have a good case.

 

[jjcrawford]

You're right, an angry and threatening email is free. I'm not squatting on the domain, in fact by the time he said he trademarked his name I already had my site up. I have filed with Arizona and received my sales tax priv as well as other things to make more of a case I'm trying to make a commerce out of the name. I'm sure it's bound to cause confusion with my other names I use, there's almost no doubt on that.

 

[justalayman]

You're right, an angry and threatening email is free. I'm not squatting on the domain, in fact by the time he said he trademarked his name I already had my site up. I have filed with Arizona and received my sales tax priv as well as other things to make more of a case I'm trying to make a commerce out of the name. I'm sure it's bound to cause confusion with my other names I use, there's almost no doubt on that.

You are missing the point about trademarking the name, which I would believe you are referring to registering it with the trademark office. That is not how one gains rights to any particular name. Using it in commerce is what entitles a person to claim a name as a trademark. That means, if the guy was selling product under that name "hooligan fight gear" last year, then he has a superior claim to you concerning the trademark since you have not sold anything under the name but only purchased a web domain with that name in anticipation of sales.

In fact, since you have not sold anything under the name hooligan fight gear yet (at least as I understand your post), you actually have no claim to the name at all.