Intellectual Property Law
Intellectual Property Law Questions? Ask a Lawyer
Hi - my name is XXXXX XXXXX I'm an Intellectual Property litigation attorney. Thanks for your question, and I'll be glad to assist you.
Domain names can be the source of trademark infringement claims if the domain name could confuse a customer and make him/her believe that one company is actually the other. But for this to be an issue, you would likely have to be in the same trade/business.
Here's a good article that you can read on this issue: http://www.nolo.com/legal-encyclopedia/avoid-trademark-infringement-domain-name-29032.html
If the domain name was being used before you began your business, this would be really difficult for you because they came first. But, if the domain name came after your business, then you would have a shot if you can prove that you're losing customers or that customers are confusing one business for another.
The best resolution is if you could work out a deal with the other company and try to settle because tradeXXXXX XXXXXtigation is expensive and protracted. Plus, there are a few issues with your situation that could be difficult to overcome. So, if you can work something out in good faith, that's probably the best way to proceed.
I hope this answers your question, but if you need something further, please don't hesitate to ask. Thanks!
Thanks Kirk, I had already read the NOLO article. I was hoping that the fact that they are not using their proper name and using my name as more a matter of laziness would have some bearing along with the fact that they are not registered to DBA any name they are currently using in Washington State or the PTO. It seems that folks just go around doing business under any old name they feel like at the moment and making things tougher for those that follow the rules. He has effectively squatted under my name with the only protection being that he has somehow done business under a name he shouldnt be using to begin with. If I had the cash I'd push it in hopes of getting the rules changed to prevent this.
Unfortunately, the fact that they're not using their proper name isn't enough - in and of itself - to give you a right that would trump theirs.
Also, trademarks don't have to be registered in order to be enforceable. Common law trademarks are created at the time the domain name, mark, image, etc. is used in business. Common law trademarks are basically as good as a registered mark, so there's no footing to gain because they're not registered anywhere.
That said, the best thing is usually to try and work out a deal, and if you can't you'll either have to decide to sue or leave it alone. Usually, the economics of the situation determine the resolution = = i.e., is it worth the money to sue to gain what you expect to.
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