3 ms·

I'm not a lawyer, but I have done a lot of trademark research for my own business, and I can tell you that you're definitely infringing. The bright line standa

I'm not a lawyer, but I have done a lot of trademark research for my own business, and I can tell you that you're definitely infringing. The bright line standard for trademark lawsuits is essentially "would a reasonable person mistake your brand for your competitors?". In this case, based on what you have said here, you have taken your competitors name, and added "my" in front of it. So most reasonable people would conclude that it is highly likely someone will mistake your competitors brand for yours. If you were in a completely different industry than the similarly named company, then there would be some wiggle room, because you could argue that even if someone was initially confused about the two companies, there is no possibility for them to buy your product thinking it was the competitors. However, you are in the exact same industry, so the likely conclusion is that the customer will be confused and likely to buy your product thinking its your competitors. Unfortunately, the domain name issue is irrelevant in the face of trademark law. In fact, as has happened with many other infringement suits, it is likely that if you lost the lawsuit, you would be forced to transfer the domain to your competitor.

calebhicks 15y ago
You're absolutely right. I don't contest that we are infringing. For the record, we didn't know anything about his business when we chose our name. We merely saw that 'companyname.com' was taken but not used. We assumed (you know what they say about assumptions) that meant we could go with 'mycompanyname.com' and be fine. Had we known about his trademarked business beforehand, we wouldn't have done so. Thank you for shedding more light on the trademark situation.
- innernette 15y ago
  I don't contest that we are infringing. This is not legal advice, just common sense: be careful what you admit online! In some cases, willful use of someone's trademark may entitle them to punitive damages or lost profits.
  - calebhicks 15y ago
    I didn't know that I was infringing until he notified me. But after doing the research, I am quite certain that I am. I definitely plan on making the necessary adjustments.
- JabavuAdams 15y ago
  > You're absolutely right. I don't contest that we are infringing. In the future, don't say things like this in writing. Not trying to be hard on you, or to encourage you to be dishonest. It's just that statements like this can really come back to bite you when they come up out of context in a legal context.
dctoedt 15y ago
Here's a good summary of trademark-infringement analysis in the U.S., from http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#7 http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm...: -snip- 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 [DCT note: See http://en.wikipedia.org/wiki/Trademark_distinctiveness http://en.wikipedia.org/wiki/Trademark_distinctiveness]; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; [DCT note: Proof of actual confusion is not required, but can be powerful evidence of a likelihood of confusion] (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser [DCT note: Confusion is more likely for an impulse purchase than one in which the buyer pays careful attention to what s/he's getting]; (7) the defendant's intent. [DCT note: Willful copying of another's mark is often taken as circumstantial evidence that consumer confusion is indeed likely, otherwise presumably the copier wouldn't have bothered.] -snip-

calebhicks 15y ago

You're absolutely right. I don't contest that we are infringing. For the record, we didn't know anything about his business when we chose our name. We merely saw that 'companyname.com' was taken but not used. We assumed (you know what they say about assumptions) that meant we could go with 'mycompanyname.com' and be fine. Had we known about his trademarked business beforehand, we wouldn't have done so. Thank you for shedding more light on the trademark situation.

innernette 15y ago
I don't contest that we are infringing. This is not legal advice, just common sense: be careful what you admit online! In some cases, willful use of someone's trademark may entitle them to punitive damages or lost profits.
- calebhicks 15y ago
  I didn't know that I was infringing until he notified me. But after doing the research, I am quite certain that I am. I definitely plan on making the necessary adjustments.
JabavuAdams 15y ago
> You're absolutely right. I don't contest that we are infringing. In the future, don't say things like this in writing. Not trying to be hard on you, or to encourage you to be dishonest. It's just that statements like this can really come back to bite you when they come up out of context in a legal context.

dctoedt 15y ago

Here's a good summary of trademark-infringement analysis in the U.S., from http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#7 http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm...: -snip- 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 [DCT note: See http://en.wikipedia.org/wiki/Trademark_distinctiveness http://en.wikipedia.org/wiki/Trademark_distinctiveness]; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; [DCT note: Proof of actual confusion is not required, but can be powerful evidence of a likelihood of confusion] (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser [DCT note: Confusion is more likely for an impulse purchase than one in which the buyer pays careful attention to what s/he's getting]; (7) the defendant's intent. [DCT note: Willful copying of another's mark is often taken as circumstantial evidence that consumer confusion is indeed likely, otherwise presumably the copier wouldn't have bothered.] -snip-