passing off - need advice about finding a US lawyer

[smoking_man]

What is the name of your state? UK (need to take action against person / company in mississippi)

Hi
We're a UK based business and we've been successfully trading online under a specific name for 2 years. We've built a worldwide reputation in our niche market. Our sites are ranked top in Google and other major search engines.

Someone in the US has recently started trading under a similar name - it's the same as ours but with one extra letter, presumably to catch type-in errors. We are 100% satisfied that this is a case of passing off.

What we need to do now is find a US based lawyer to represent us and take action against the other person for passing off. But, we need advice about finding a suitable lawyer.

Should we employ a lawyer in Mississippi (where the offender is) or elsewhere? Will the location of the lawyer make any difference? Anything else we should think about when choosing a lawyer?

Thanks in advance for any advice.

 

[racer72]

Is your name copyrighted in the US? If not, there is very little that can be done.

 

[HomeGuru]

And were you on X-Files? If not, read the red words at the top of this page.

 

[smoking_man]

>>Is your name copyrighted in the US? If not, there is very little
>>that can be done.

I think copyrighting of the name is irrelevant - it's trademarking that counts, and the name is trademarked.

>>And were you on X-Files? If not, read the red words at the top
>>of this page

US Law Only?? If the offender is in the US then US trademark law applies and we need to speak to a US lawyer.
Civil, brief and to the point? I thought I was. Apologies if not. (Could someone explain the reference to X-Files as this seems to be totally irrelevant)
Or did you mean "type in lowercase letters"??

 

[racer72]

US trademarks are maintained and controlled by the US Copyright office, hence business names are copyrighted. A logo for that business would be considered a trademark. If your business name is not registered in the US, you have no legal standing in this country and cannot sue a US citizen or business for copyright infringement.

 

[smoking_man]

The USPTO seems to disagree with you:
http://www.uspto.gov/web/offices/tac/tmfaq.htm#DefineTrademark
http://www.uspto.gov/web/offices/tac/tmfaq.htm#Patent001

I think you're way off the mark thinking that UK companies cannot sue US companies - it's certainly true that US companies can sue UK companies, and it's certainly true that US companies can protect their trademarks across Europe and it's certainly true that UK companies can protect their trademarks in Europe and the US.

Our name is trademarked in the UK and protected across Europe under the Madrid protocol. Our trademark is also protected in the US (with the USPTO?) - (I'm not a trademark lawyer, I'm a developer so I'm not sure how the international trademark protection process works and we employ lawyers to deal with trademark issues in the UK), but UK companies (and individuals) can certainly protect their names in the US. Check WIPO.

But getting away from the nitpicking and getting back to the original questions ..... do we need a lawyer in Mississippi or can we use a lawyer anywhere in the US? And is there anything else we should know about when choosing a lawyer???

 

[12345678]

Damm dude. You told him.

 

[mravelo]

I believe your claim would fall under federal law, so it would not matter where you file.