Confusingly similar

[Parris]

What is the name of your state (only U.S. law)? APO/SC

I am out of the country because my husband is serving in the military abroad. So we are on a U.S. military base, but our home of record is in South Carolina.

I have a U.S. Trademark. For privacy, let's just call it "Lizzys Hair Creations". I've had to protect my trademark on several occasions from others who popped up using the same or similar business names selling the same goods and services.

Well now, a celebrity has a new website that was brought to my attention. Let's call it "Lizzie's Designs" for privacy. They are using the tagline "lizzieshaircreations" to refer to their hair designs on their website and on social media.

If you search for my trademark and use an "ie" instead of a "y" in Lizzy the search goes directly to my trademark. I'm guessing because the USPTO recognizes that "Lizzy's Hair Creations" and "Lizzie's Hair Creations" sound exactly the same when spoken and that they are confusingly similar.

I have sent a email to the registered office of the website informing them that they are infringing on my trademark in efforts to resolve the issue quickly and privately. However, I've gotten no response.

I want to avoid having to fly back to the States to defend my trademark if at all possible. So my next step was going to be to send them a notarized letter via certified mail and to send Facebook and their website hosting provider a trademark claim notice/DMCA as I know Facebook is good about removing content from past experiences.

I feel like if I ignore if, this celebrity will continue to use it and I may lose my trademark if they decide to pursue that option. I have even purchased the additional domain names with the "ie" spelling so they can't use it in the future.

Am I right in protecting my trademark or am I overthinking this and paranoid? I don't want to start a war with a celebrity that I am unable to finish. Any advice is so much appreciated! Thank you!

Editing to add: I am actively using my trademark in commerce and ship products worldwide... including the U.S. But of course I am based outside the country temporarily due to my husbands military service.

 

[FlyingRon]

The way you do this without travelling to the US is to hire a lawyer. Trademark issues are rarely fought in person anyhow. If it goes to a point where "cease and desist" letters won't work, it will have to go to court.

You can not use DMCA to fight trademark issues. That only covers copyright. You can try writing letters to the providers if you make it clear that you are talking about a trademark issue. Even with DMCA, they don't HAVE to do anyhting. DMCA just gives them an out to avoid liability for copyright violations if they take down the site. There is no similar provision under trademark law, however some providers are senstive to trademark concerns on their own volition.

Notarization doesn't confer any "authenticity." All it does is attest that the person who signed the letter is who they claim they are.

 

[Parris]

Hey thanks for the response. Yes I understand the difference between copyright and trademark. I think I used DMCA because when you make a report on Facebook, they have it all on the same page.... and I was just typing away lol.

I actually just received a reply. They are saying that since I am not in the USA, my trademark is not enforceable and is abandoned. I am pretty sure this is false... especially since my husband is serving in the US Army. Our location is not a choice. So I am hoping they won't take advantage of that. I stated this in my reply and insisted that they cease and desist and that I'm certain this can be resolved without further legal action.

I'm going to contact an attorney though and see what I'll need to do if it gets ugly... which I am anticipating.

 

[quincy]

Hey thanks for the response. Yes I understand the difference between copyright and trademark. I think I used DMCA because when you make a report on Facebook, they have it all on the same page.... and I was just typing away lol.

I actually just received a reply. They are saying that since I am not in the USA, my trademark is not enforceable and is abandoned. I am pretty sure this is false... especially since my husband is serving in the US Army. Our location is not a choice. So I am hoping they won't take advantage of that. I stated this in my reply and insisted that they cease and desist and that I'm certain this can be resolved without further legal action.

I'm going to contact an attorney though and see what I'll need to do if it gets ugly... which I am anticipating.

Your mark is enforceable if it is in use in the US.

A cease and desist letter sent from an IP attorney in the US to your infringer will have a greater impact than a letter sent by you. An attorney cease and desist shows the recipient that you have already consulted a lawyer and are considering a lawsuit.

A mark can be presumed "abandoned" if it has not been used for a continuous period of 3 years or more. This is a rebuttable presumption, as trademark holders might stop using a mark for a period of time while products are being modified or revised (or for financial reasons or other reasons). And a mark is not abandoned if products are still marketed or identified by the mark (like Ford's Edsel).

The DMCA takedown notice HAS been used by trademark holders to remove infringing material from online locations in the past with mixed results. Although the notice is part of the Copyright Act, some sites are honoring DMCA requests from trademark holders anyway. There is continuing discussion on having a provision similar to the DMCA for trademarks.

As an aside, it has become popular recently for trademarks to include copyrightable design elements so the marks can be registered and protected under both copyright and trademark laws.

 

[Parris]

Your mark is enforceable if it is in use in the US.

A cease and desist letter sent from an IP attorney in the US to your infringer will have a greater impact than a letter sent by you. An attorney cease and desist shows the recipient that you have already consulted a lawyer and are considering a lawsuit.

A mark can be presumed "abandoned" if it has not been used for a continuous period of 3 years or more. This is a rebuttable presumption, as trademark holders might stop using a mark for a period of time while products are being modified or revised (or for financial reasons or other reasons). And a mark is not abandoned if products are still marketed or identified by the mark (like Ford's Edsel).

The DMCA takedown notice HAS been used by trademark holders to remove infringing material from online locations in the past with mixed results. Although the notice is part of the Copyright Act, some sites are honoring DMCA requests from trademark holders anyway. There is continuing discussion on having a provision similar to the DMCA for trademarks.

As an aside, it has become popular recently for trademarks to include copyrightable design elements so the marks can be registered and protected under both copyright and trademark laws.

Thanks. It is in use in the US as I ship to the US and actually travel back and forth to do business on occasion. I have others who sell my products in the US as well. So while they might not see or understand that because I am not a HUGE company, it's still verifiable and will continue to be in use until we return the the States.

Have a great week!

 

[quincy]

Thanks. It is in use in the US as I ship to the US and actually travel back and forth to do business on occasion. I have others who sell my products in the US as well. So while they might not see or understand that because I am not a HUGE company, it's still verifiable and will continue to be in use until we return the the States.

Have a great week!

If you have evidence that consumers have been confused or are likely to be confused by the similarities, and if letters do not spur action and change, you should speak with an IP attorney in your area. An attorney's contact to the company using your trademark is often all it takes.

Good luck, Parris, and I hope you have a great week, as well.