Legal Question in Intellectual Property in California

Specific Trademark Information Needed !

I started a small service oriented business a few years ago and incorperated . About a year and a half ago it branched off in another direction and a new division was created. I obtained a DBA for the new division.Before choosing the name, I searched the internet for any company that might be using the name and only found 1 that sold a product that was totally unrelated to my company. I then obtained a .COM web address for the new name. I was happy to find it was available.I had a $15,000 web site built and maintained for the last 18 months. I since invented a product that currently has a U. S. patent pending and is selling very well to the public and to major U.S. manufacturers in my industry.I was recently contacted by a company(through an attorney) and was told that they have a tradrmark on the name and that I may not use the name in any way including my domain name.The trademark that they have is for a product that they sell, and not their business name. Although their product is in the same field as my product,I had not heard of it before and need to find a way to keep my business and especially my domain name.The name in question is my business (not Product)name. What can I do?

Would obtaining a service mark help? Thanks.


Asked on 10/14/05, 12:36 pm

3 Answers from Attorneys
William Hochberg Law Offices of William Hochberg

Re: Specific Trademark Information Needed !

There is a distinction between a "tradename" and a "trademark": the former applies to the business name and the latter to the goods or services. This may not be enough to overcome a good challenge from the proprietor of a trademark on a service against the proprietor of a tradename. But the inquiry is fact-specific and I'd need to know info about when you and your challenger each started using the mark, as well as the name itself, in order to determine what your defenses may be.

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Answered on 10/14/05, 12:54 pm
Ken Dallara Law Office of Ken Dallara

Re: Specific Trademark Information Needed !

You must find the first date of use of the name, and how it was used and especially where it was used. Federal Registration of a trademark does not validate it's use. The trademark office just examines the marks validity as a trademark but not whether it has the right to use the mark.

It is a fairly sticky situation where you will probably need an attorney to straighten it out. I am not trying to sell my wares, most of my posts here recommend doing it yourself, but this one is a little different where the down side could be your business.

Contact me or another attorney specializing in trademarks. Be prepared to show your first date of use along with PROOF of use, and scope of use.

Good Luck!!!

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Answered on 10/14/05, 12:55 pm
D. Alexander Floum, Esq.

Re: Specific Trademark Information Needed !

Domain names give no real trademark rights and -- normally -- the first user of the TRADEMARK beats the domain name owner.

As a former professor of trademark law who has litigated trademark-versus-domain name disputes, I highly suggest you retain a competent attorney to analyze your situation.

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Answered on 10/14/05, 1:23 pm


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