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BH
BH, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 250
Experience:  JD and Masters of Law in Intellectual Property and Media.
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I have a business that I have owned since 2010. I was contacted

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I have a business that I have owned since 2010. I was contacted today by another business owner that owns a business with the name Door $aver and mine is Door Savers. We both are in advertising, we publish two different publications. Both in California. He has been in Business since 2006 and I started in Missouri in 2010 then brought us to San Diego this year. I have not trademarked my name, he has a trademark. Below is his trademark information. I'm wondering at this point what I should do and if I have any ground, if I can trademark Door Savers and be ok. He is wanting me to change my name and forfeit my domain www.doorsavers.com his is www.doorsaver.net.

Word Mark DOOR $AVER
Goods and Services IC 016. US 002 005 022 023 029 037 038 050. G & S: Advertising pamphlets; Advertising signs of paper or cardboard; General feature magazines; Informational flyers featuring discount coupons and information about local businesses and events; Magazines featuring general features, discount coupons and information about local businesses and events; Newspapers in the field of general features, local events, local business listings and discount coupons for local businesses; Printed materials, namely, press releases featuring general features, discount coupons and information about local businesses and events.

FIRST USE: 20060707. FIRST USE IN COMMERCE: 20060707
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 78955390
Filing Date August 18, 2006
Current Basis 1A
Original Filing Basis 1A
Published for Opposition May 1, 2007
Registration Number(NNN) NNN-NNNN
Registration Date July 17, 2007
Owner (REGISTRANT) Pynes, Robert INDIVIDUAL UNITED STATESXXXXX Murrieta CALIFORNIA 92563
Attorney of Record Michael Newcomb
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "DOOR" APART FROM THE MARK AS SHOWN
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  BH replied 1 year ago.

bridgeth :

Is your business substantially similar to his business as described in the trademark description?

Customer:

We do advertising on huge door hangers, he does advertising in a booklet format. But both in advertising

bridgeth :

You likely have a trademark infringement issue since his covers "advertising signs of paper or cardboard" "printed materials" and "discount coupons". Since his trademark is federally filed, it does not matter that you are both in California, the issue will be the same regardless of what state you are in. However, you need not turn over the domain name if you have been legitimately using it.

bridgeth :

The only instance in which a domain name is XXXXX XXXXX over is in instances of cyber squatting.

Customer:

So even though he is using and trademarked a $ instead of an S?

bridgeth :

Yes, unfortunately that is not enough of a distinction.

Customer:

He is about 150 miles away from where we are doing business and says he plans to go into our area.

bridgeth :

The criteria is whether a consumer would find a substantial likelihood of confusion.

Customer:

So the only option would be to rename my company?

bridgeth :

Well he has a federally registered trademark which means that he must have been conducting interstate commerce (it is a requirement to obtain federal trademark registration).

bridgeth :

If you started your business before his you could argue that you have common law trademark rights but unfortunately, those would only apply in the geographical area that you started your business.

bridgeth :

Which was Missouri

bridgeth :

A federal trademark covers the entire country.

Customer:

So how would I go about responding from here? And is there a form of my name that I could change to make it alright to use?

bridgeth :

You could try to fight it by hiring a trademark attorney but you do not have a strong case and it would likely be very expensive.

bridgeth :

You would have to come up with a name that is substantially different so that there is no chance that a consumer would confuse the two companies.

bridgeth :

And when you do, make sure to check the USPTO data base to ensure that no other company has the same name in the same category of services.

bridgeth :

Or a confusingly similar name.

Customer:

if there are similar names on that website is that nationwide or does it go by the area you are located ?

bridgeth :

Something like Door Coupons or Front Step Savings would work.

bridgeth :

The USPTO is nationwide.

bridgeth :

Those that have a mark registered with the USPTO have protection for that mark across the country.

Customer:

what do I do about my domain?

bridgeth :

www.frontstepsavings.com is available.

bridgeth :

I wouldn't turn it over

bridgeth :

If they want the domain name they can offer to purchase it from you.

bridgeth :

Though you are infringing on their trademark, it would cost them a bundle to actually enforce it. Better to tell them you will change your name if they will pay you for the domain name

Customer:

and what could they get if they sued us over the name?

bridgeth :

Basically a settlement - you will agree to stop using the current company name that you are in exchange for their agreeing not to proceed against you in any action for infringement and they purchase the domain name.

bridgeth :

They could receive the amount of profit that you made during the time that you used the same name if a court were to find that you were unjustly enriched by using their tradename.

Customer:

but if I didn't agree and keep using it and they sue me, can they sue me for monitary compensation

bridgeth :

Yes, they can sue you for profiting off of their name and request disgorgement of profits, attorneys fees (if they win) and potentially punitive damages if they can prove that you did it with intent to rip off their brand.

Customer:

so you would suggest changing the name and offering to sell them the domain. how much could we sell it for? We have been around for almost 4 years and have done a lot to build traffic. their website isn't even ranked in the U.S. because it receives no traffic, ours is ranked 116,00 out of 4 million

bridgeth :

If they do sue you, you would also have to pay attorneys fees to defend yourself, which can be a lot.

bridgeth :

I would ask for what you think it is worth.

bridgeth :

There is no set price

bridgeth :

Or don't sell it to them at all.

Customer:

would San Diego Door Savers work?

bridgeth :

That is a good question. If they operate in San Diego and are a prominent company like Val-Pak, I would say no, it would not help.

Customer:

you have been a great help. thank you very much

bridgeth :

It would be like someone opening a hamburger restaurant called McDonalds and naming it San Diego McDonalds - people would still be confused

Customer:

yeah good point

bridgeth :

Sorry that you are in this situation!

bridgeth :

Best of luck with everything and make sure to check www.uspto.com when naming your company. :)

Customer:

could I point our domain to our new domain so people will know

bridgeth :

Yes, you could do that for a bit. But after that you might be getting into what is called "Cybersquatting"

bridgeth :

that is, using a trademarked domain name to profit off of that trademark while not actually using the domain

Customer:

ok. Thank you so much for your help. have a great day

bridgeth :

right now you are not in that situation because your company is legitimately called Door Savers and you are using the domain - not just sitting on it.

bridgeth :

You too

bridgeth :

best of luck and please rate my response good or better! Thanks!

BH, Lawyer
Satisfied Customers: 250
Experience: JD and Masters of Law in Intellectual Property and Media.
BH and 3 other Intellectual Property Law Specialists are ready to help you

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