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rsa.esq
rsa.esq, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 73
Experience:  Sworn to the California Bar in 2011. Former staff editor at The New York Times Co. and seasoned news professional of 20 years experience in the U.S. and abroad.
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A company with a similar name to mine sent me a decease

Customer Question

A company with a similar name to mine sent me a decease letter. Their name is***** , mine is Prime Edit Post Production. I recently trademarked mine and they claim they had it first. I am thinking about changing my company name to Prime Editors. Do you think that would be enough to make them go away?
Submitted: 4 months ago.
Category: Intellectual Property Law
Customer: replied 4 months ago.
Posted by JustAnswer at customer's request) Hello. I would like to request the following Expert Service(s) from you: Live Phone Call. Let me know if you need more information, or send me the service offer(s) so we can proceed.
Expert:  rsa.esq replied 4 months ago.

Hi! I'm scott, and I hope to provide some useful perspective on this issue.

While there may be trademark infringement one way or other, it's not always so "cut and dried."

It's good that you registered a trademark.

However, registration is not required for trademark protection, and is no panacea.

In fact, first-use can win over registration, and for thos using the same or very similar marks first, they can claim first rights to it -- assuming they can prove they were first in time.

I know that's not what you wanted to hear, but it's important for you to know.

With respect to possible Trademark infingement, several factors come into play:

-- whether the products/services are the same or very similar

-- whether the similar products/services are competing in the same geographic area or proximate, or even the same 'virtual space'

-- whether the businesses are targeting the same consumer demographic, etc. --

The key to establishing infringement, or defeating that, is proving that the similarity of the marks creates confusion among the same consumer demographic between the serviceproviders.

"Prime Edits" "Prime Edit Post Production" and "Prime Editors" are all very similar: is there a way to distinguish your service from the other? Service offering? Geographic reach? Intended consumer demographic?

Legal remedies are expensive and time consuming, so it might be best to try and resolve between yourselves.

If you both are offering simial services to similar customers in the same market, isn't best for your business to brand in a distinctive fashion?

If you are really attached to your trademark, explain your desire to avoid litigation and ask them to substaniate their first use. If they can, a prolonged battle just may not benefit anyone.

Here's a resource for you:

http://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright

I hope this provided some helpful perspective: and if you thinks so, I would appreciatea positive rating!

Customer: replied 4 months ago.
Please let me know what you think
Customer: replied 4 months ago.
This is the letter I got from them
Customer: replied 4 months ago.
letter
Expert:  rsa.esq replied 4 months ago.

I hope you can understand this forum is limited, and necessarily so, because of the nature of legal services and legal ethics. I cannot provide specific legal advice in this forum.

I provided a longer overview and more perspective than most would have done in htis forum.

I am sorry if you did not find that sufficienly helpful.

If you need specific legal advice, I urge you to invest in a full legal consultation with a qualified attorney directly.

Good Luck & Best Wishes!

Customer: replied 4 months ago.
I just wanna know, if I sign the letter and agree and then register Prime Editors do you think they will have a problem with us?
Expert:  rsa.esq replied 4 months ago.

first, please see that your question is not reasonable:

prediciting another party's legal reaction, while not "legal advice" certainly contstitues legal counseling, which I cannot do in this forum.

But if you apply a little logic, I think you already have your answer. Put yourself in their place.

1. Their company name is "Prime Edits"

2. They object to your use of the name "Prime Edit" and "Prime Edit Post Production"

3. Now you propose to use "Prime Editors" as distinctive.

Butthink about it: If they do not see the addition of "Post Production" in the name as sufficiently distinguishing, what are the odds they'll fine 3 letters (Prime Edit-ors) as sufficiently distinguishing?

If you werre on the other side, what would be your reaction to the proposed 3-letter change?

Besides, I again ask: Is it not in your own interest to set your company apart as distinctively as possible?

You can fight it out, with a lot of time and expense, or you can resolve it yourself.

As a general rule, I discourage legal action because of the time cost and general waste.

Taking a cue from BSG (with a slight misquote): "don't get into a legal battle that you don't want to fight."

Good Luck & Best Wishes!

-scott

P.S. I would really appreciate that positive rating -- thanks!

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