# Need Trademark Infringement Advice



## Tam (Sep 27, 2008)

A couple of years ago I decided to buy the domain name.   No other business on the web was using the name so I felt “safe” that no one would choose a business name if the domain was already taken.  Wrong.

A few months ago I plugged in my business name and lo and behold….someone else is using the name.  They can’t use the domain because I own it, but if you google the name their site comes up.  

I waited for about six weeks and then I started the process to trademark the name.  That gave the other person plenty of time to do it first…it is MY business name but since I didn’t have it trademarked I thought it only fair to give the other party a chance.  

On Thursday I got my notification that my business name is officially trademarked.  Yea!    But now I have to get the other person to stop using the name.  They haven’t responded to my email and I would prefer not to get all “legal” over this…but I’m not sure what else to do.

I’m hoping to get my site up and running around the first of the year, and I really want this other person to change their business name before then. 

Has anyone else had legal dealings regarding trademarks from either side of the issue?  

I should add that my business name is trademarked through the State of Texas.


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## Tabitha (Sep 28, 2008)

Trademark is tricky. I imagine you will need a lawyer to look into it. A dozen other people have my  official biz name. I go by  ART SPOT, but my LLC is realy Texas Art Spot LLC. If you google Art Spot you will find a wide variety of companies with the same or similar name, in dif states & will dif product types. 

I do know, if you trademark a cucumber melon scented soap, you do not hold a trademark or it does not flow over to cucumber melon flavored drink or a fabric you name cucumber melon. It gets tricky.


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## Tam (Sep 30, 2008)

The same name can't be used to sell similar products.  That much I know (though not much else).  In my case, this company is using my exact business name and selling the same type of products.  

I have their address now, I'll send them a polite letter.


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## Tabitha (Sep 30, 2008)

> I should add that my business name is trademarked through the State of Texas.


Can another company trademark the same name through another state?


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## Deda (Sep 30, 2008)

Tam said:
			
		

> A few months ago I plugged in my business name and lo and behold….someone else is using the name.  They can’t use the domain because I own it, but if you google the name their site comes up.
> 
> I waited for about six weeks and then I started the process to trademark the name.  That gave the other person plenty of time to do it first…it is MY business name but since I didn’t have it trademarked I thought it only fair to give the other party a chance...
> 
> I should add that my business name is trademarked through the State of Texas.



So you have a Texas registered Trademark name? Not Federal? I believe that a State issued trademark is meant for _local_ commerce, not national.

If the person using your name is in Texas may be able to do something. Otherwise they may not be bound by a Texas Trademark and may in fact have the same name Trademarked in their home state.

If you want to use your name Nationwide you should register with the Patents and Trademark Office.

Because they were already using the name in commerce before you began the Texas trademark process they most likely will be able to continue to use it.  

You should check with a lawyer.  You may run into all sorts of issues with Date of First Use in Interstate Commerce among other things.


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## Guest (Sep 30, 2008)

*trademark*

OK..but what if you are online and you're "national" just by virtue of that?

Do you register locally or nationally?


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## Deda (Sep 30, 2008)

I would think Federally.

If you are shipping outside of MD then you're National.  

(think great big huge sales tax loophole!)

Edited to add:  Check to see if you are protected for intrastate or interstate commerce.


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## Tam (Sep 30, 2008)

The other company is in Texas, too.  

I know to protect the name on a national level I'd have to register through the Feds.  I just can't afford that right now.

I've been selling soap under the company name for nearly two years now but I didn't even think about registering the name because I also own the domain name...who would name a business when the domain is already taken?? 

I probably will have to go through legal channels.  :cry: 

Thanks.


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## Deda (Sep 30, 2008)

Get a good lawyer.  

If you trademarked the name after you already knew that someone else was using it you may have a fight on your hands, even considering the domain name.  

Date of first commerce can be a high hurdle.

this is copied from the Texas SOS website;

_4. How are trademark rights acquired?

Trademark rights are not acquired through the registration process. Common law ownership rights are acquired through actual use of the mark in commerce. Generally, the first person to use a trademark is the first person to acquire rights to the mark.
_

'Generally' is a vague term.  I noticed on the Texas site that the SOS does not check the name against any other database, except active trademarks.  Did you check your name against the State Corp Commissions fict name and co name registers?

_12. Does the secretary of state search federally registered trademarks, or any other databases, when examining a state application?

No. The provisions of Chapter 16, Business & Commerce Code only require the secretary of state to search the active state trademark registrations for identical or confusingly similar marks for purposes of state registration. The secretary of state does not search the state assumed name records, state corporation, limited liability company or limited partnership names, or the United States Patent and Trademark Office when examining a submitted trademark application. The responsibility of performing a more substantial search to avoid infringement situations is placed upon the person seeking to register a trademark or service mark._


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## carebear (Oct 4, 2008)

if they name was in use by someone else then the TM should not even have been issued.  if this person wants to fight it could cost you some $$


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## Tam (Oct 4, 2008)

Registering the DBA with the County is not the same as trademarking a name.   I now own the name in the state of Texas at least for the next ten years which is when the trademark expires.

Thanks for the advice, I do appreciate it.


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