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Maverick
Maverick, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 6391
Experience:  20 years professional experience.
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I'm going to rephrase my question, now that I have had

Customer Question

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: 1 year ago.
Category: Intellectual Property Law
Expert:  Maverick replied 1 year ago.

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

Customer: replied 1 year 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.
Expert:  Maverick replied 1 year 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.

Customer: replied 1 year 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.
Expert:  Maverick replied 1 year 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?

Customer: replied 1 year 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.
Expert:  Maverick replied 1 year 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.

Customer: replied 1 year ago.
That's great. How should I respond to the letter or his Facebook messages at this time?
Expert:  Maverick replied 1 year 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.

Expert:  Maverick replied 1 year ago.

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

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