Trademark filed on a name I've been using

[eggplanto]

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

I've had a small side business for the past 8 years with a specific name, and I've had the .com domain for 8 years and various social media accounts with that same name for over 5 years. A company wants to buy my domain because they want to name a product with the same name that I've been using. I also noticed that they filed a trademark for this name a few months back. Our businesses aren't that similar so I don't think anybody would be confused between my business and their business, but I don't want to give up "my name".

Is it possible that I could be sued or forced to give up my domain and social media username? I live in Missouri and I believe the other company is based in Canada if that matters.

 

[quincy]

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

I've had a small side business for the past 8 years with a specific name, and I've had the .com domain for 8 years and various social media accounts with that same name for over 5 years. A company wants to buy my domain because they want to name a product with the same name that I've been using. I also noticed that they filed a trademark for this name a few months back. Our businesses aren't that similar so I don't think anybody would be confused between my business and their business, but I don't want to give up "my name".

Is it possible that I could be sued or forced to give up my domain and social media username? I live in Missouri and I believe the other company is based in Canada if that matters.

Did the Canadian company file for trademark registration with the USPTO? Does it intend to enter the US market or has it entered the US market already? When was the Canadian company's first use of the trademark in commerce - or hasn't it been used yet to identify goods or services?

In a trademark infringement case in the US, a court will look at who is the senior user of the mark (first to use) and how distinctive the mark is, as well as the similarity between the marks, the similarity of the goods or services being offered, if there is likely to be an expansion into the junior user's market by the senior user, the intent behind the junior user's choosing of the mark, and consumer confusion, among other factors. In the US, it is not the first to register the mark that is the presumed owner of the mark but rather the first to use the mark. This is different from many other countries, where the first to register the mark will be the presumed owner of the mark.

For a US case that outlines the factors considered when determining if there is a likelihood of confusion, you can check out Polaroid Corporation v. Polarad Electronics Corporation, 182 F.Supp. 350 (E.D.N.Y. 1960), http://law.justia.com/cases/federal/district-courts/FSupp/182/350/1902964/ and 287 F.2d 492 (2d Cir 1961), https://cyber.law.harvard.edu/metaschool/fisher/domain/tmcases/polaroid.htm

With this said, the answer to your question is that, yes, it is possible you could be sued or forced to give up your domain name and social media username. If your businesses (goods/services) are not similar and no confusion is likely to be generated by a dual use of the name in the US, however, it is probably unlikely that the Canadian business has good reason to challenge your use. But everything depends on the facts, and these facts are best reviewed by a trademark attorney in your area.

Good luck.

 

[eggplanto]

Did the Canadian company file for trademark registration with the USPTO? Does it intend to enter the US market or has it entered the US market already? When was the Canadian company's first use of the trademark in commerce - or hasn't it been used yet to identify goods or services?

In a trademark infringement case in the US, a court will look at who is the senior user of the mark (first to use) and how distinctive the mark is, as well as the similarity between the marks, the similarity of the goods or services being offered, if there is likely to be an expansion into the junior user's market by the senior user, the intent behind the junior user's choosing of the mark, and consumer confusion, among other factors. In the US, it is not the first to register the mark that is the presumed owner of the mark but rather the first to use the mark. This is different from many other countries, where the first to register the mark will be the presumed owner of the mark.

For a US case that outlines the factors considered when determining if there is a likelihood of confusion, you can check out Polaroid Corporation v. Polarad Electronics Corporation, 287 F.2d 492 (2d Cir 1961). Here is a link: https://cyber.law.harvard.edu/metaschool/fisher/domain/tmcases/polaroid.htm

With this said, the answer to your question is that, yes, it is possible you could be sued or forced to give up your domain name and social media username. If your businesses (goods/services) are not similar and no confusion is likely to be generated by a dual use of the name in the US, however, it is probably unlikely that the Canadian business has good reason to challenge your use. But everything depends on the facts, and these facts are best reviewed by a trademark attorney in your area.

Good luck.

Thank you for the information. Yes, the Canadian Company filed the trademark with the USPTO. As far as I can tell, they've been selling a product with this name for several months now in many countries, including the US.

 

[quincy]

Thank you for the information. Yes, the Canadian Company filed the trademark with the USPTO. As far as I can tell, they've been selling a product with this name for several months now in many countries, including the US.

You have an opportunity to oppose the registration of the trademark if you believe the registration by the Canadian company could harm your business.

It could be possible for both your business and the Canadian company to use the trademark if the Trademark Trial and Appeal Board finds that consumer confusion is unlikely, or certain restrictions (perhaps geographic restrictions) could be placed on a use of the mark, or the Canadian company's registration can be denied. Other possibilities exist.

It really depends on the facts.

I recommend you have these facts personally reviewed by a trademark attorney in your area. The specific trademark (which should not be mentioned here) needs to be known, and the history of the marks as used by both you and the Canadian company needs to be investigated.

Good luck.

 

[FlyingRon]

Opposing registration is an easy thing to file (you may do it online). I've done it in the past, and you will get a letter back telling you what happened as a result (in fact, a reporter from Bloomberg called me to interview me on that protest).

Note that however, you have to have USED the trademark in commerce to have rights to it. INTENT to use only works for registration. You have to not have a business name and domain name, but to use it in commerce as a mark. Not enough information here to tell if you've achieved that.

 

[quincy]

Here are two links to information on how to oppose a trademark application and the grounds upon which one can oppose registration, the first link to the International Trademark Association ("Opposing a Trademark Application") and the second to NOLO ("Opposing and Cancelling a Trademark Registration" by Attorney Rich Stim).

INTA: http://www.inta.org/TrademarkBasics/FactSheets/Pages/OpposingTrademarkApplicationFactSheet.aspx

NOLO: http://www.nolo.com/legal-encyclopedia/opposing-cancelling-trademark-registration.html

And you can find additional and more detailed information from the USPTO at http://www.uspto.gov

The facts, as FlyingRon reiterated, are necessary to determine if you have grounds to oppose the registration of the trademark by the Canadian company.

Good luck, eggplanto.