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Robert McEwen, Esq.
Robert McEwen, Esq., Lawyer
Category: Intellectual Property Law
Satisfied Customers: 11470
Experience:  Licensed Texas General Practice Attorney
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I have a business that I have owned since 2010. I was contacted

Resolved Question:

I have a business that I have owned since 2010. I was contacted today by another business owner that owns a business with the same name as mine but without an s at the end. We both are in advertising, we publish two different publications. I have not trademarked my name, he has a trademark. Does he have any ground if he chooses to pursue.
Submitted: 11 months ago.
Category: Intellectual Property Law
Expert:  Robert McEwen, Esq. replied 11 months ago.

Robert McEwen, Esq. :

Thank you for using JustAnswer. I am researching your issue and will respond shortly.

Robert McEwen, Esq. :

What, specifically, is the name that is at issue?

Customer:

Door Saver is the name of his business. Door Savers is the name of mine. We both operate under a corporate name and the door saver(s) part are d.b.a.'s

Customer:

his web address is doorsaver.net and mine is doorsavers.com

Robert McEwen, Esq. :

Do you operate in the same market?

Customer:

I originally started my business in Missouri and have moved it to california this year. His business is in Marrietta, CA which is about an hour and a half away from San Diego, which is where we are focusing on. He said that they have plans to move into the San Diego area this year

Robert McEwen, Esq. :

How long have you been in operation with this name?

Customer:

In California I have only been in operation with Door Savers for a few months, In Missouri since 2010.

Robert McEwen, Esq. :

Unfortaunately as it is now, he has a very good case against you, mainly because he's had the "Door $aver" Federally registered trademark since 2006. If you had a same or similar mark that you were using before the registration, you could have "common law" trademark rights, but only in the territory that you were operating in at the time the other party registered the name. Once the name is XXXXX XXXXX can only operate in that territory that you were operating in before the registration, and the registrant would have the trademark rights everywhere else in the U.S.

Robert McEwen, Esq. :

The crux of trademark law is "likelihood of confusion". . That is, confusion that consumers will believe the products or services originated or was authorized from the trademark owner. If there is an action against someone using a mark, the court is going to look at the following factors to see if there is such a likelihood:


 



  • Strength of the mark

  • Proximity of the goods

  • Similarity of the marks

  • Evidence of actual confusion

  • Marketing channels used

  • Type of goods and the degree of care likely to be exercised by the purchaser

  • Defendant's intent in selecting the mark

  • Likelihood of expansion of the product lines

Robert McEwen, Esq. :

But it all depends on the distinctiveness of the original mark. (distinctiveness, for instance, means that "TexOnMobile", for a mobile phone company, probably would still be dissallowed because "ExxonMobil" is a very distinctive mark, so regardless of the difference in the industries, it probably would not be allowed... )
And to the extent that a distinctive mark is already filed, a mark that is exactly the same is almost certainly not going to be. Now if it were a combination of words in existence (such as "Silent Night" or some other combination), then industries will come into play, because the likelihood of confusion where there are not made up words would be less if there are differing industries.

Robert McEwen, Esq. :

Because you're in the same industry, and he filed the Federal trademark, the less distinctive the marks need to be before a court would find infringement. And infringement does not have to be knowing. That is, you can unintentionally infringe upon another's registered trademark.

Robert McEwen, Esq. :

Small differences like the addition or subtraction of an "s" at the end will almost never save you from infringement.

Customer:

Hi Mr. Erdman,



Thank you for taking the time in speaking with me in regards XXXXX XXXXX Register Mark and Domain use of the Door $aver (s). Here is the link from the United States Patient and Trademark Office of the official use of our Mark:



As we have discussed over the phone, our companies are too close and alike in use of the mark and we ( WMS Inc.) are requesting that your company to change your name and assign your domain name over to our company World Marketing Solutions Inc. dba Door $aver.

Please contact me back by the end of this week Friday as we discussed over the phone today at your request.Hopefully we can come to the resolution as requested herein. If you need further Legal advice I would advise to seek legal council and or contact our our Law Group whom specializes in this Law.


Customer:

that is the email from here. So what do I do from here?

Robert McEwen, Esq. :

Unfortunately I would agree that this is almost certainly too close, and if they took it to court, you would almost certainly lose. While you could seek to license the name (that's where they give you the right to use the name), they can set their own prices or even refuse completely to license it. In that instance, you could continue to operate under that name and risk being sued (and if you were sued, you almost certainly would lose), or you could stop using the name altogether.

Robert McEwen, Esq. :

Sometimes on this site I get questions where the matter is 50/50, or there are common law rights with the alleged infringer, or the trademark holder is on a fishing expedition with no real case. But this is a situation where the trademark holder, if they were to take you to court, would almost certainly win.

Customer:

even though our publications are two different types? And why would I even fathom assigning my domain to them? Can they do that as well? And what could they sue us for?

Robert McEwen, Esq. :

If you're marketing the same type of product (that is an advertising product) and thus marketing to the same companies (or even feasibly the same companies) that would certainly be enough to say that you were in the same market.

Robert McEwen, Esq. :

As for the domain name, that's pursuant to the Anti Cybersquatting law, where if there's a trademarked name and you pick it up, they can sue you for misappropriating that name.

Customer:

so what can i do from here? Could we change the name to Door Saverz?

Robert McEwen, Esq. :

I've already laid out your options above. If you change your name (stop operating under Door Savers) the new name would be analyzed under those same factors as above. Door Saverz probably would not be enough of a change, although of course the further you get away from the registered trademark, the less of a likelihood of confusion exists.

Robert McEwen, Esq. :

I know this is probably not what you wanted to hear, but it is the law. I hope that clears things up anyway. If you have any other questions, please let me know. If not, and you have not yet, please rate my answer AND press the "submit" button, if applicable. Please note that I don't get any credit for my answer unless and until you rate it a 3, 4, 5 (good or better). Thank you, XXXXX XXXXX luck to you!

Robert McEwen, Esq. :

Did you have any other questions before you rate this answer?

Robert McEwen, Esq. :

Are you there? Please note that I am still here, awaiting your response.

Robert McEwen, Esq. :

Hello?

Robert McEwen, Esq. :

Should I continue to await your response, or may I assist the other customers that are waiting?

Robert McEwen, Esq. :

My apologies, but I must assist the other customers that are waiting. If there's nothing else, please rate this answer. Please note that I don't get any credit for the time (~30 minutes) and effort that I spent on this answer unless and until you rate it a 3, 4, 5 (good or better) AND press the "submit" button, if applicable. If you feel that I have gone above and beyond in this answer (my average answer is about 10 minutes) bonuses are greatly appreciated. Thank you, XXXXX XXXXX luck to you!

Robert McEwen, Esq., Lawyer
Satisfied Customers: 11470
Experience: Licensed Texas General Practice Attorney
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