Intellectual Property Law

Intellectual Property Law Questions? Ask a Lawyer

Ask a Lawyer,
Get an Answer ASAP!

Intellectual Property Law

I'm going to rephrase my question, now that I have had

Customer Question
more sleep. I have a...
I'm going to rephrase my question, now that I have had more sleep. I have a business called we will say Prymal Sports Academy. Our tag line is "Home of Prymal Soccer & Prymal Goalkeeping". I have filed for a trademark and the international category is 041 Soccer Training & Soccer Sports Facility. That is literally all we do. I have 4000 sq ft of turf with built in soccer goals for soccer training. In the county next to me there is a company just called Prymal. It is a one man shop that does health and nutrition and fitness classes. We play soccer with kids and he does fitness classes to change your body. How much trouble am in?
Submitted: 2 years ago.Category: Intellectual Property Law
Show More
Show Less
Ask Your Own Intellectual Property Law Question
Answered in 13 hours by:
1/8/2016
IP Lawyer: Maverick, Lawyer replied 2 years ago
Maverick
Maverick, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 6,426
Experience: 20 years professional experience.
Verified

Welcome to Just Answer (“JA”)! My name is Maverick. Please note that:

(A) The information we provide is general information. No attorney-client relationship or privilege is formed by communicating with me. If you want legal advice, you must consult with a local attorney in person before acting or deciding not to act based on any information given here;

(B) Experts answer questions based on the honor system. When I feel that I have provided you with a complete answer, I will ask for you to assign a feedback rating so that JA will compensate me for my time; and

(C) You should not be concerned about any short delays between your questions and my replies. Please know that I answer most questions within the hour if I am signed on. If I am not signed on, then I still make every attempt to respond within 24 hours.

Thank you for taking the time to understand how this site works. By continuing, you confirm that you understand and agree to these terms.

1. Have you received any kind of legal notices or cease and desist letters from the other business owner?

Ask Your Own Intellectual Property Law Question
Customer reply replied 2 years ago
He sent me a cease and desist letter, but then after I ignored it, he contacted me via chat on Facebook saying he was hoping to not spend more money as he was $1000 in and wanted to find a different name.
IP Lawyer: Maverick, Lawyer replied 2 years ago

There are several different issues involved here. Please state the specific legal question you want answered so we can better assist you.

If you want a more in-depth evaluation, I would suggest that you consider a phone call option with me so we can flush this out better or an offer of additional services as I need to ask you many key background questions before formulating an answer.

Ask Your Own Intellectual Property Law Question
Customer reply replied 2 years ago
My question is we are in different businesses and don't compete. He is in fitness and I am in soccer. Do we have a leg to stand on here. Should we ignore it. I mean we are starting to get traction and potential for lots of business.
IP Lawyer: Maverick, Lawyer replied 2 years ago

1. Who opened the business first?

2. What form of business do you operate? LLC, INC., sole prop?

3. What form of business does he operate?

4. Did you file an assumed name for your business?

5. Did the state approve your business name already?

Ask Your Own Intellectual Property Law Question
Customer reply replied 2 years ago
Technically he opened Prymal LLC a few months before me on paper. He runs it alone. We opened Prymal Sports Academy LLC as a partnership and yes we are both approved in Missouri. I'm not sure what an assumed name is. We both are registered with the Secretary of State. We filed for our trademark specifically with international class 041 soccer training and soccer facility. That will most likely be approved as the investigation came back clear.
IP Lawyer: Maverick, Lawyer replied 2 years ago

Trademark infringement turns on whether your use of the name/trademark is likely to cause confusion about the source of the his or your goods/services. The court consider the following factors when making such a determination:

1. Strength or Weakness of the Plaintiff’s Mark. The more the consuming public recognizes the plaintiff’s trademark as an indication of origin of the plaintiff’s goods, the more likely it is that consumers would be confused about the source of the defendant’s goods if the defendant uses a similar mark.

2. Defendant’s Use of the Mark. If the defendant and plaintiff use their trademarks on the same, related, or complementary kinds of goods there may be a greater likelihood of confusion about the source of the goods than otherwise.

3. Similarity of Plaintiff’s and Defendant’s Marks. If the overall impression created by the plaintiff’s trademark in the marketplace is similar to that created by the defendant’s trademark in [appearance] [sound] [or] [meaning], there is a greater chance [that consumers are likely to be confused by defendant’s use of a mark] [of likelihood of confusion]. [Similarities in appearance, sound or meaning weigh more heavily than differences in finding the marks are similar].

4. Actual Confusion. If use by the defendant of the plaintiff’s trademark has led to instances of actual confusion, this strongly suggests a likelihood of confusion. However actual confusion is not required for a finding of likelihood of confusion. Even if actual confusion did not occur, the defendant’s use of the trademark may still be likely to cause confusion. As you consider whether the trademark used by the defendant creates for consumers a likelihood of confusion with the plaintiff’s trademark, you should weigh any instances of actual confusion against the opportunities for such confusion. If the instances of actual confusion have been relatively frequent, you may find that there has been substantial actual confusion. If, by contrast, there is a very large volume of sales, but only a few isolated instances of actual confusion you may find that there has not been substantial actual confusion.

5. Defendant’s Intent. Knowing use by defendant of the plaintiff’s trademark to identify similar goods may strongly show an intent to derive benefit from the reputation of the plaintiff’s mark, suggesting an intent to cause a likelihood of confusion. On the other hand, even in the absence of proof that the defendant acted knowingly, the use of plaintiff’s trademark to identify similar goods may indicate a likelihood of confusion.

6. Marketing/Advertising Channels. If the plaintiff’s and defendant’s [goods] [services] are likely to be sold in the same or similar stores or outlets, or advertised in similar media, this may increase the likelihood of confusion.

7. Consumer’s Degree of Care. The more sophisticated the potential buyers of the goods or the more costly the goods, the more careful and discriminating the reasonably prudent purchaser exercising ordinary caution may be. They may be less likely to be confused by similarities in the plaintiff’s and defendant’s trademarks.

8. Product Line Expansion. When the parties’ products differ, you may consider how likely the plaintiff is to begin selling the products for which the defendant is using the plaintiff’s trademark. If there is a strong possibility of expanding into the other party’s market, there is a greater likelihood of confusion.

While these type of determinations are made on case by case basis, it is my opinion that his case for trademark infringement would be fairly weak at this time.

Ask Your Own Intellectual Property Law Question
Customer reply replied 2 years ago
That's great. How should I respond to the letter or his Facebook messages at this time?
IP Lawyer: Maverick, Lawyer replied 2 years ago

You can look at the factors I cited and borrow some wording/arguments that are in your favor. Put those in a letter responding to his letter and kindly explain that you disagree with his allegations for XYZ reasons. Then adopt the wait and see approach.

Ask Your Own Intellectual Property Law Question
IP Lawyer: Maverick, Lawyer replied 2 years ago

Are you still there? If this answered your question, please assign a feedback rating for me on this. Thank you.

Ask Your Own Intellectual Property Law Question
Ask Maverick Your Own Question
Maverick
Maverick
Maverick, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 6,426
6,426 Satisfied Customers
Experience: 20 years professional experience.

Maverick is online now

A new question is answered every 9 seconds

How JustAnswer works:

  • Ask an ExpertExperts are full of valuable knowledge and are ready to help with any question. Credentials confirmed by a Fortune 500 verification firm.
  • Get a Professional AnswerVia email, text message, or notification as you wait on our site. Ask follow up questions if you need to.
  • 100% Satisfaction GuaranteeRate the answer you receive.

JustAnswer in the News:

Ask-a-doc Web sites: If you've got a quick question, you can try to get an answer from sites that say they have various specialists on hand to give quick answers... Justanswer.com.
JustAnswer.com...has seen a spike since October in legal questions from readers about layoffs, unemployment and severance.
Web sites like justanswer.com/legal
...leave nothing to chance.
Traffic on JustAnswer rose 14 percent...and had nearly 400,000 page views in 30 days...inquiries related to stress, high blood pressure, drinking and heart pain jumped 33 percent.
Tory Johnson, GMA Workplace Contributor, discusses work-from-home jobs, such as JustAnswer in which verified Experts answer people’s questions.
I will tell you that...the things you have to go through to be an Expert are quite rigorous.

What Customers are Saying:

Mr. Kaplun clearly had an exceptional understanding of the issue and was able to explain it concisely. I would recommend JustAnswer to anyone. Great service that lives up to its promises!

Gary B.Edmond, OK

My Expert was fast and seemed to have the answer to my taser question at the tips of her fingers. Communication was excellent. I left feeling confident in her answer.

EricRedwood City, CA

I am very pleased with JustAnswer as a place to go for divorce or criminal law knowledge and insight.

MichaelWichita, KS

PaulMJD helped me with questions I had regarding an urgent legal matter. His answers were excellent.

Three H.Houston, TX

Anne was extremely helpful. Her information put me in the right direction for action that kept me legal, possible saving me a ton of money in the future. Thank you again, Anne!!

ElaineAtlanta, GA

It worked great. I had the facts and I presented them to my ex-landlord and she folded and returned my deposit. The 50 bucks I spent with you solved my problem.

TonyApopka, FL

Wonderful service, prompt, efficient, and accurate. Couldn't have asked for more. I cannot thank you enough for your help.

Mary C.Freshfield, Liverpool, UK

< Previous | Next >

Meet the Experts:

Alex Reese

Alex Reese

Lawyer

3,106 satisfied customers

Experienced in intellectual property law

Robert McEwen, Esq.

Robert McEwen, Esq.

Lawyer

859 satisfied customers

Licensed Texas General Practice Attorney

Dimitry K., Esq.

Dimitry K., Esq.

Attorney

561 satisfied customers

I assist my clients with IP questions that arise in their daily course of doing business.

Thomas Swartz

Thomas Swartz

Lawyer

461 satisfied customers

Twenty one years experience as a lawyer in New York and New Jersey. Former Appellate Law Clerk.

Ely

Ely

Counselor at Law

455 satisfied customers

Licensed attorney in private practice.

Wilton A. Person

Wilton A. Person

Lawyer

352 satisfied customers

MBA, Experienced and Knowledgeable in Intellectual Property Law

BartEsq

BartEsq

Researcher

192 satisfied customers

Juris Doctor

< Previous | Next >

Related Intellectual Property Law Questions
I recently filed for a trademark that was rejected on the
Hello. I recently filed for a trademark that was rejected on the basis geographically descriptive and ornamental refusal. How can I reply to this to allow my trademark to be accepted? … read more
Roy Hadavi
Roy Hadavi
Attorney
Juris Doctorate
996 satisfied customers
I applied for a trademark name (for a certification) a
hello, I applied for a trademark name (for a certification) a couple years ago but the application was abandoned because I didn't follow up timely. now, a person I was collaborating with at the time j… read more
INFOLAWYER
INFOLAWYER
Partner
Doctoral Degree
56,287 satisfied customers
Can a Chinese company register a trademark in the United
Can a Chinese company register a trademark in the United States ? If so, what does the Chinese company need.… read more
PaulmoJD
PaulmoJD
Attorney At Law
Doctoral Degree
106 satisfied customers
3 related questions: 1. Can I trademark similar names to my
3 related questions:1. Can I trademark similar names to my own mark? Or will I be denied the second application?I just did a servicemark application yesterday with the mark: WayUPHigh!!Now I want to d… read more
socrateaser
socrateaser
1,031 satisfied customers
Do you provide answers for trademark questions? I have some
Do you provide answers for trademark questions? I have some specific questions and need someone with a good knowledge about challenges concerning a trademark. … read more
socrateaser
socrateaser
1,031 satisfied customers
I need someone who is familiar with trademark and logos. I
Hi, I need someone who is familiar with trademark and logos. I need to know why a dog jersey of the FC Barcelona Soccer Team is NOT a protected logo. Why is that? if all the research i've done says th… read more
Damien Bosco
Damien Bosco
3,388 satisfied customers
I would like to trademark the brand name Bioasis for Health
I would like to trademark the brand name Bioasis for Health and Beauty products and Homegoods. This would be for sales on Amazon. Is there anything preventing me from being able to trademark it?Thanks… read more
Legal Eagle
Legal Eagle
Attorney
Doctoral Degree
7,372 satisfied customers
I have a question on registering a trademark for product
I have a question on registering a trademark for product branding. I searched USPTO to make sure my name was clear to use and I applied to register. However, I discovered a business in a consulting se… read more
Thomas Swartz
Thomas Swartz
Lawyer
Juris Doctor
461 satisfied customers
I need help with music things. Copyrights and trademarks. If
I need help with music things. Copyrights and trademarks … read more
Gerald, Esq
Gerald, Esq
Juris Doctor
3,537 satisfied customers
We just got our business trademarked and I have some
We just got our business trademarked and I have some questions regarding the usage of the business name. … read more
socrateaser
socrateaser
1,031 satisfied customers
Trademark Clarification Question: So, I'm getting ready to
Trademark Clarification Question: So, I'm getting ready to start selling product in the next year with a company that I've recently started. I've checked the name, let's call it Lovely Lemons, and I s… read more
Phillips Esq.
Phillips Esq.
Attorney
Juris Doctor
18,356 satisfied customers
I have a question about trademarking, we received the
Hi I have a question about trademarking, we received the results of our LegalZoom trademark search and want to know if we should proceed with filing the trademark based on the results. … read more
Roy Hadavi
Roy Hadavi
Attorney
Juris Doctorate
996 satisfied customers
I have a trademark question that's pretty simple concerning
I have a trademark question that's pretty simple concerning domain names. I currently own a domain name that is www.airbnbguy.com. Does this domain name have any issues if I go live with it?… read more
Dwayne B.
Dwayne B.
Juris Doctor
28,693 satisfied customers
I'm actually asking a copyright/trademark question. I am a
Hi...I'm actually asking a copyright/trademark question. I am a writer and small, independent publisher. I wrote a series that was published in 2005, 2006, 2007 and is actively available and selling n… read more
Robert McEwen, Esq.
Robert McEwen, Esq.
Lawyer
Doctoral Degree
859 satisfied customers
I have a trademark on website and the was infringed on by
I have a trademark on website and the was infringed on by another website using the exact same name with just a different extension on the domain . What is my legal recourse in this matter? … read more
Roy Hadavi
Roy Hadavi
Attorney
Juris Doctorate
996 satisfied customers
How is a word plural or singularity effect trademark treat
How is a word plural or singularity effect trademark treat such as Improvement or Improvements since I can offer singular and multiple services? … read more
socrateaser
socrateaser
1,031 satisfied customers
My business has a trademark registered in the US. We
Hi, my business has a trademark registered in the US. We transferred ownership of it to a new (family trust based) company. We were quoted a lot of money by a US firm to do the transfer of ownership a… read more
Leon
Leon
Solicitor and Notary
Master\u0027s Degree
18,926 satisfied customers
I am an Etsy sell and I received a trademark infringement
I am an Etsy sell and I received a trademark infringement from Country Girl LML Investments claiming my embroidered baby shirt which says "Country girl shake it for me" and has an appliqué baby rattle… read more
INFOLAWYER
INFOLAWYER
Partner
Doctoral Degree
56,287 satisfied customers

DISCLAIMER: Answers from Experts on JustAnswer are not substitutes for the advice of an attorney. JustAnswer is a public forum and questions and responses are not private or confidential or protected by the attorney-client privilege. The Expert above is not your attorney, and the response above is not legal advice. You should not read this response to propose specific action or address specific circumstances, but only to give you a sense of general principles of law that might affect the situation you describe. Application of these general principles to particular circumstances must be done by a lawyer who has spoken with you in confidence, learned all relevant information, and explored various options. Before acting on these general principles, you should hire a lawyer licensed to practice law in the jurisdiction to which your question pertains.

The responses above are from individual Experts, not JustAnswer. The site and services are provided “as is”. To view the verified credential of an Expert, click on the “Verified” symbol in the Expert’s profile. This site is not for emergency questions which should be directed immediately by telephone or in-person to qualified professionals. Please carefully read the Terms of Service (last updated February 8, 2012).

DISCLAIMER: Answers from Experts on JustAnswer are not substitutes for the advice of an attorney. JustAnswer is a public forum and questions and responses are not private or confidential or protected by the attorney-client privilege. The Expert above is not your attorney, and the response above is not legal advice. You should not read this response to propose specific action or address specific circumstances, but only to give you a sense of general principles of law that might affect the situation you describe. Application of these general principles to particular circumstances must be done by a lawyer who has spoken with you in confidence, learned all relevant information, and explored various options. Before acting on these general principles, you should hire a lawyer licensed to practice law in the jurisdiction to which your question pertains.

The responses above are from individual Experts, not JustAnswer. The site and services are provided “as is”. To view the verified credential of an Expert, click on the “Verified” symbol in the Expert’s profile. This site is not for emergency questions which should be directed immediately by telephone or in-person to qualified professionals. Please carefully read the Terms of Service (last updated February 8, 2012).

Show MoreShow Less

Ask Your Question

x