Trademark Infringement--HELP!?

Question

Basically, we received a letter from a company that has the same name as ours and are alledging trademark infringement. They are based out of Texas and have a plant in Rice Lake, WIsconsin and we are in Milwaukee, WIsconsin---we are very far away from eachother...but we have completely different products/services. They manufacture window and door components (parts on the windows) and we install windows, siding, and doors. They sell products we offer a service. Also, they want the right to our domain name. Is this trademark infringement since we offer two different products/services or do we have to surrender or name and domain?Please help fast! Can you give me any advice on what I should do?

We have not been operating longer than they have, but our clients are two different types, we sell to homeowners, they sell components of the window itself to window manufaxturers.

Answer 1

".....The use of a trademark in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant's intent."
from http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm

But the problem for you the most is that, it may reduce your business too, because of them.

You should have considered:
8 Quick Tips to Choosing a Domain Name

Your domain name is the center of your Internet identity. So what type of things should you take into consideration when choosing the name that will represent you on the Web?

1. Keep it short
Although some places allow you to register a name with up to 63 characters, you have to keep in mind that people need to be able to remember it, and easily type it into their browser. Try to register the shortest name that your customers and visitors will associate with your Website. The general rule of thumb is, keep it under seven characters if possible. (Not including the suffix.)

2. Dot What?
There are many different extensions available right now. For businesses, we recommend a .com suffix. It is the first extension that most people try when searching for a Website. Also, since it is one of the oldest extensions, .com shows that your business has been around for a while and that you have a well-established presence on the Web.

3. Avoid Trademarked Names
There are two really good reasons for this. First, it’s not very nice. We have all heard the stories about the zany guy who thought ahead and bought "some-huge-multi-million-dolla... and sold it to the company for enough money to retire on. But, remember that those companies, like yours, have spent lots of time and money creating their brand, and what goes around comes around. Also, companies are no longer opening their pocketbooks to get their names back. They are calling their lawyers.

4. Register Your Domain NOW
Domain names are being snatched up faster than candy at the St. Patrick’s Day parade. You must register soon unless you want to get stuck with "the-domain-name-that-no-one-w... You do not have to have a Webmaster or an ecommerce department or a Web design consultant or... Heck, you don’t even need a Web page. Just get out there and register before you loose the opportunity to get the name you really want.

5. One May Not Be Enough
Sometimes, it isn’t a bad idea to register several similar domain names. If you have "yourname.com", register "yourname.net" so no one else takes it. You can register your full company name and a shorter, easier to remember version. Some people even register common misspellings of their company’s name. (You don’t need a separate Web page for each. Several domains can point to the same Website.)

6. Character Types
Just a reminder. Domain names can only use letters, numbers, and dashes. Spaces and symbols are not allowed. Also, domain names are not case sensitive.

7. Ask Around
When you have settled on several available name choices, see what your friends and clients have to say. A name that may make perfect sense to you may be too hard for other people to remember. Is your domain easy to say? Is it hard to spell? Do you have to explain why you chose the name?

8. Don’t Shell Out Large Amounts of $$$
At one time, companies were able to get away with charging reservation fees plus a "mandatory" $70 InterNIC fee. Recently, it was decided that other companies should be able to compete to sell domain names. This has lowered prices dramatically.
And remember, if you think that if you have found the right domain name, but you're not quite sure if it's the one... register it anyway before someone else does!


http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm will help u with all cyber laws.

Vera Chandler.
http://www.domain-name-register-store.com

Answer 2

Contact a trademark attorney. You have a specific legal question that needs a specific legal answer.

Determining if marks infringe can be tricky and each situation varies from another.

The general rules to keep in mind are:

1) Are the names similar in Sound, Appearance or Meaning?

2) Are the industries the same or similar to one another?

3) Are the names confusingly similar to the average consumer? In other words, could customers be confused and assume that both companies are affiliated?

4) Do the trade areas cross? What about the advertising routes -- are the products/services advertised in common places?

Here's what the USPTO has to say about this matter:

"The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:

the similarity of the marks; and
the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related."

Hope that helps! I wish you much success & happiness in all your ventures!

Answer 3

Well, you should get a lawyer first.

And, even though you do different work, your businesses are in the same industry so there is the potential for confusion by the consumer (the main thing they look for when interpreting trademark infringment).

Also, do you have documentation showing when you started using the trademark (name of your company)? That's generally what it'll come down to...it's still going to cost you if they try to take it to trial. However, if you can document the fact that you've been operating with the trademark longer than they have, a lawyer could draw up a letter backing them off.

Answer 4

The most obvious answer would be to consult an attorney and try to protect your interest. I was under the assumption that you must continually establish a very distinct brand identitiy in order to claim your brand as a registered trademark.

Here is a great start. http://www.uspto.gov/main/trademarks.htm

The United States patent and trademark website. Good luck.

Answer 5

I have been browsing the web more than 3 hours today looking for answer to the same question, yet I haven't found any interesting discussion like this. it is pretty worth enough for me.

Answer 6

It's bad