Legal Question in Intellectual Property in California

I already own a registered trademark on my company name....have for 9 years.

Recently, I've had some problems with an infringer using part of the whole name to name their own company, and products they make, and claim it's not infringing because their use does not include the entire name that I have TM'd. The name I use has a hyphen in it---the main name and then after the hyphen is sort of a descriptive phrase about the main name.

I have customers contacting me saying they've seen this company and were confused as to whether they were somehow affiliated with me, or carrying "my products". To me, the confusion itself validates that it is infringement.

I say use of even part of the name for their same classification of goods company, or same classification of products *IS* still infringing.... Am I wrong? If so, can I shorten my TM name to better protect myself? And what is involved with that process at this point?

I know this would be easier to describe if I used the actual name to illustrate so you could see for yourself, but I don't really want to post it if it appears publicly here. Would reveal in a private e-mail though to a lawyer who could actually help/advise me.


Asked on 10/15/09, 1:21 am

3 Answers from Attorneys
Cathy Cowin Law Offices of Cathy Cowin

Yes, you are correct that confusion is the primary question involved.

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Answered on 10/15/09, 12:30 pm
John Gibson

Your first, and least expensive action to send a cease and desist letter to the company. If they have tried to register their trademark you can protest that registration (you should be checking for this). If they don't respond to your letter your next option would be to sue for trademark infringement.

As far as what you should or could do to better protect your trademark it is hard to say without more facts. Feel free to contact me directly if you would like more help with this.

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Answered on 10/15/09, 2:38 pm
OCEAN BEACH ASSOCIATES OCEAN BEACH ASSOCIATES

I do trademark litigation. I need to review the marks and caselaw before I can give an opinion as to whether or not it is likely that you have a successful infringement case. As it is causing confusion, there may be some other remedies besides you changing your trademark. Contact me directly.

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Answered on 10/15/09, 6:54 pm


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