Intellectual Property Law
Intellectual Property Law Questions? Ask a Lawyer
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What, specifically, is the name that is at issue?
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
his web address is doorsaver.net and mine is doorsavers.com
Do you operate in the same market?
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
How long have you been in operation with this name?
In California I have only been in operation with Door Savers for a few months, In Missouri since 2010.
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.
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:
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.
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.
Small differences like the addition or subtraction of an "s" at the end will almost never save you from infringement.
Hi Mr. Erdman,
that is the email from here. So what do I do from here?
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.
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.
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?
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.
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.
so what can i do from here? Could we change the name to Door Saverz?
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.
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!
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