Trademark help. UK/ michigan

[Natjc]

can anyone help based in the usa.. or offer some advice.

i have a uk Ltd company. i also have a website. the domain was purchased 07/2017. and trademark of my company name and domain went through 04/2018.
i attract business from all countries not just the uk. im currently in the process of trademarking in the usa ( currently on going ).

i have come across a website the same as mine that ends in .com ( mine is .co.uk) and i have a secondary domain which maps to my site.

i didnt know about this website until they starting submitting DMCA Notices to google... the claim im copying their work.. however my text and images are my own. i have counter noticed it... this led me to know about them..

their domain was registed in 2015. they claim to be registered as a LLC in michigan..however i have reached out to michigan state gov who have confirmed there is no entity of the names used ( they work under a name that isn't the same as my company but claim to be doing business DBA as the same name as me).

where do i stand with this?

they will have some right of protection but surely not on a wide geographical level ? they are not paying tax as they are not registered .

will they still have common law?

not being registered is one thing but the DBA is the name of my company which matches the domain of mine ( and theirs) and they state it in their website its doing business as.

other than being petty and submitting DMCA how do i get them to stop? when its blatent our work is very much our own just within the same market.

sorry im still learning and now to all of this any help appreciated.

thanks

 

[justalayman]

Trademark rights in the US are gained through use. Registration affords the holder certain additional rights and presumptions. If the other company has established their rights in the US prior to yours and the companies compete in the same market, it is likely they can prevent your use of the mark in the US

 

[Natjc]

Trademark rights in the US are gained through use. Registration affords the holder certain additional rights and presumptions. If the other company has established their rights in the US prior to yours and the companies compete in the same market, it is likely they can prevent your use of the mark in the US

im aware they are established.. but in what sense? they are based in michigan yet are not registered, michigan state have responded and stated no such entity or dba exists. surely if their dba name isnt registered let alone past their own state then its only covered on a state level?

 

[PayrollHRGuy]

They could be a sole proprietor. No need to register that with the MI Sec State.

 

[justalayman]

It depends on their market. If they market whatever the service or product is nationwide, they get to claim trademark rights in their normal market area


Plus a business does not in itself have to be a formal business to gain trademark rights. If I, as an individual without any formal business structure, decide to perform business under a particular name, I will gain the trademark rights to that name. That means I will have the right to defend my rights in my mark against any who encroach into my market area and sector using my mark.

 

[quincy]

can anyone help based in the usa.. or offer some advice.

i have a uk Ltd company. i also have a website. the domain was purchased 07/2017. and trademark of my company name and domain went through 04/2018.
i attract business from all countries not just the uk. im currently in the process of trademarking in the usa ( currently on going ).

i have come across a website the same as mine that ends in .com ( mine is .co.uk) and i have a secondary domain which maps to my site.

i didnt know about this website until they starting submitting DMCA Notices to google... the claim im copying their work.. however my text and images are my own. i have counter noticed it... this led me to know about them..

their domain was registed in 2015. they claim to be registered as a LLC in michigan..however i have reached out to michigan state gov who have confirmed there is no entity of the names used ( they work under a name that isn't the same as my company but claim to be doing business DBA as the same name as me).

where do i stand with this?

they will have some right of protection but surely not on a wide geographical level ? they are not paying tax as they are not registered .

will they still have common law?

not being registered is one thing but the DBA is the name of my company which matches the domain of mine ( and theirs) and they state it in their website its doing business as.

other than being petty and submitting DMCA how do i get them to stop? when its blatent our work is very much our own just within the same market.

sorry im still learning and now to all of this any help appreciated.

thanks

Trademark law centers on consumer confusion. If the name you are using for your business in the UK confuses consumers into believing you are connected with a business operating under the same name in the US, you could be infringing on the trademark rights of the company that first used the name in commerce in the US.

Registration of a trademark is not a requirement in the US for a name to be afforded trademark rights. These rights come with the use of the mark.

A DMCA takedown notice is used when a copyright holder finds material on the internet infringes on their (registered or unregistered) copyrights. The alleged infringing material will be removed from its place on the internet by a website in response to the takedown notice, if the website wishes to avail itself of the immunity offered it under the Copyright Act's DMCA.

If the one who published the alleged infringing material receives notice of takedown, they can respond to the notice arguing that what they published is not infringing. You have done that with your counter notice. It will now be up to the claimed copyright holder to take legal action against you, the alleged infringer.

You may enjoy trademark rights in the UK that cannot be enjoyed in the US because of a name conflict.

I recommend you have the specific name you and the US company have both chosen as trademarks personally reviewed by an IP attorney in your area. You obviously have attracted the attention of the US business with your uses of the trademark and, apparently, copyrighted material.

Again, in the US, registration of a trademark is not required as it is in the UK to have presumed rights to a name. In the UK, registration provides presumption of ownership. In the US, it is first use.

 

[Natjc]

The could be a sole proprietor. No need to register that with the MI Sec State.

sure i did think that. however they have it all over their site they are a llc and dba. surely no need for any of that if a sole trader

Trademark law centers on consumer confusion. If the name you are using for your business in the UK confuses consumers into believing you are connected with a business operating under the same name in the US, you could be infringing on the trademark rights of the company that first used the name in commerce in the US.

Registration of a trademark is not a requirement in the US for a name to be afforded trademark rights. These rights come with the use of the mark.

A DMCA takedown notice is used when a copyright holder finds material on the internet infringes on their (registered or unregistered) copyrights. The alleged infringing material will be removed from its place on the internet by a website in response to the takedown notice, if the website wishes to avail itself of the immunity offered it under the Copyright Act's DMCA.

If the one who published the alleged infringing material receives notice of takedown, they can respond to the notice arguing that what they published is not infringing. You have done that with your counter notice. It will now be up to the claimed copyright holder to take legal action against you, the alleged infringer.

You may enjoy trademark rights in the UK that cannot be enjoyed in the US because of a name conflict.

I recommend you have the specific name you and the US company have both chosen as trademarks personally reviewed by an IP attorney in your area. You obviously have attracted the attention of the US business with your uses of the trademark and, apparently, copyrighted material.

Again, in the US, registration of a trademark is not required as it is in the UK to have presumed rights to a name. In the UK, registration provides presumption of ownership. In the US, it is first use.

is all this still the case if the person isnt even registered? a dba name is fictional ? there actually company name is diff to mine. i have done the dmca notice back.. but im baffled as to why it is allowed to be nasty tactics when having checked their site and mine its different. we both discuss various theories but nether of us are the theorists. i didnt think google would tolerate dmca that are just for bringing down competition, like i said all my work is my own. they just dont appreciate competition.

i thought first use rights unprotected were in state they are based.

thanks

 

[Natjc]

It depends on their market. If they market whatever the service or product is nationwide, they get to claim trademark rights in their normal market area


Plus a business does not in itself have to be a formal business to gain trademark rights. If I, as an individual without any formal business structure, decide to perform business under a particular name, I will gain the trademark rights to that name. That means I will have the right to defend my rights in my mark against any who encroach into my market area and sector using my mark.

i read common law trademark protection was only in the state they operate. so if they are a business operating outside of that area surely they are not protected? looking for clarification

 

[quincy]

sure i did think that. however they have it all over their site they are a llc and dba. surely no need for any of that if a sole trader


is all this still the case if the person isnt even registered? a dba name is fictional ? there actually company name is diff to mine. i have done the dmca notice back.. but im baffled as to why it is allowed to be nasty tactics when having checked their site and mine its different. we both discuss various theories but nether of us are the theorists. i didnt think google would tolerate dmca that are just for bringing down competition, like i said all my work is my own. they just dont appreciate competition.

i thought first use rights unprotected were in state they are based.

thanks

A company name can be different from the trademark used to identify its goods or services.

If the business operates solely in Michigan and has not expanded beyond Michigan's borders - and has no intention of expanding beyond Michigan's borders - you could have rights to use your trademark in the US but must cede your rights to exclusive use of the trademark in the state of Michigan.

Once again, REGISTRATION of a trademark and REGISTRATION of a copyright is not a requirement for rights in the US. Copyrights are automatic once a creative and original work is fixed in tangible form. Trademarks can be protected upon first use of the mark in commerce.

 

[justalayman]

First use in the market area and market sector gives a right to claim rights to the mark in that area and sector. If their only market area is within Michigan then you would be able to market yourself in the US outside of Michigan

But given the presence of the Internet, market areas are harder to define and simply by virtue of the availability of the Internet across the country, it makes it harder to limit their market area to just a single state.


Google must follow the law regarding dmca. If there is a takedown notice registered google must comply or they become complicit in any activity by an infringer. That is where you make a counter notice. Google will respond as the law requires. It prevents google from being drug into the argument.

 

[Natjc]

A company name can be different from the trademark used to identify its goods or services.

If the business operates solely in Michigan and has not expanded beyond Michigan's borders - and has no intention of expanding beyond Michigan's borders - you could have rights to use your trademark in the US but must cede your rights to exclusive use of the trademark in the state of Michigan.

Once again, REGISTRATION of a trademark and REGISTRATION of a copyright is not a requirement for rights in the US.

so if michigan state unregistered trademark reaches no further than their state? and they operate out of that.. surely grey area?

 

[Natjc]

A company name can be different from the trademark used to identify its goods or services.

If the business operates solely in Michigan and has not expanded beyond Michigan's borders - and has no intention of expanding beyond Michigan's borders - you could have rights to use your trademark in the US but must cede your rights to exclusive use of the trademark in the state of Michigan.

Once again, REGISTRATION of a trademark and REGISTRATION of a copyright is not a requirement for rights in the US. Copyrights are automatic once a creative and original work is fixed in tangible form. Trademarks can be protected upon first use of the mark in commerce.

so if my work and that of my competitor is different then i shoukd be able to dmca back as my website is my own and nothing is theirs?

 

[quincy]

so if michigan state unregistered trademark reaches no further than their state? and they operate out of that.. surely grey area?

Everything will depend on the specific facts. These facts are best reviewed by an IP professional in your area.

If you file a counternotice to the takedown notice, the company's response to your counternotice will be a lawsuit.

 

[justalayman]

so if michigan state unregistered trademark reaches no further than their state? and they operate out of that.. surely grey area?

No. They can market wherever they wish to and in doing so will establish rights to the mark in that area if they are the first using the mark in question.

Again, in the US you do not have to register a mark to have a valid claim to it. It is whomever first uses it in a particular market area and business sector

 

[Natjc]

Everything will depend on the specific facts. These facts are best reviewed by an IP professional in your area.

If you file a counternotice to the takedown notice, the company's response to your counternotice will be a lawsuit.

there is no case. its just dirty tactics as im a competitor. like i said my work is my own. their work is their own i dont intend to play dirty back with dmca lies. and im aware no lawsuit will come from these notices.

thank you for your replies.