5 ms·

Ow, My Trademark (Need Legal Help w\ Infringement)

7 points by owmytrademark 15y ago

TL;DR Version: Someone started using my company name in commerce about three weeks after I started using it. I have first use in commerce and (as of this week) the trademark. What I don't have is much money for legal representation or the legal know-how to fight this pro se. The web hasn't been very helpful, does anyone know of an IP lawyer or start up legal help desk for situations like these? -- About a year ago I started building a company: Domain purchased, design commissioned, business cards printed, code started. But it's not a weekend hack-a-thon type project, it's more of a slow burn long-term project. About three months into building it full-time (I saved up and quit my job to pursue it) I went to register the twitter handle before heading off to a convention... Only it was taken... I started poking around to find that accounts on almost all of the various social networks were registered, and a shop at an online marketplace under the name was open for business. The name itself is unique but familiar... Even more, the name uses an odd spelling for one of the terms. I did some research and found that my first use in commerce bested her by at least 3 weeks, so I applied for the trademark, and contacted her to make sure that she knew that I was using the name (But, I was nice! I did it in a: "It sucks that we both started using the name around the same time, but I was there first." sort of way.) This was in June, 2011. I received the trademark a few days ago, but, since applying for it she has started a website under the name ("www.[trademarked-name]ontheweb.com" As if our site wasn't "on the web"?) and formed an LLC ([Trademarked Name LLC.]) What's worse is that she has started using my tagline in various interviews and articles written about her. It's kind of surreal, she has a degree in business and is pursuing an MBA as well, so I'm not sure why she would register the name everywhere except at the USPTO? It feels like she's simply acting in bad faith. I'm completely self-financed so I don't have a lot of money to burn in legal fees. Does anyone know of an IP lawyer or start up legal help desk for situations like these

larrys 15y ago
My suggestion since this involves essentially a domain name is to file a UDRP to get control of her domain. Of course nothing will prevent the person from registering a different name but you aren't going to be able to handle the cost of the trademark case. Cost of a UDRP should be $5000 including attorney fees.
- owmytrademark 15y ago
  I think that I'm going to start by filing infringement claims with the various services that she uses (she doesn't host her own site, she uses a service.)
staunch 15y ago
Consider talking to the person (with legal advice first). Maybe she'd change her name if you paid for the cost of switching? Probably cheaper than legal action.
- owmytrademark 15y ago
  I don't thank that it would help. After contacting her to tell her that we were already using the name, she went out and registered it on just about every social media platform (that she hadn't already registered) and put up a blog post announcing her "exciting" plans to incorporate our business model into her own.
  - Tangaroa 15y ago
    Make copies of that blog post, your email to her, and your published materials at the time which discuss your business model. You can use it to allege willful infringement. Have records of your earlier use of the name and your earlier use of the tagline and any other marketing slogans that she is using. Make a list of all of the social media apps that she has registered using your name after you asked her to stop using it. Contact them all alleging trademark infringement and ask them to shut down the account or rename it. See if Nolo Press has a book on trademark disputes. If she is using your marketing materials, I think you have good cause for a civil case. I am not a lawyer and this is not legal advice. Also, build up your business to be better than hers.
nostromo 15y ago
Honestly, I'd spend little to no time on this. Startups do not live and die based on the uniqueness of their trademark. Your time is better spent working on your product. If / when you get real traction, you'll have enough cash to get this resolved.
- owmytrademark 15y ago
  My biggest concern is that she's starting to push us further and further down in terms of google results. She has been getting so much press that we're barely on the first page anymore.
  - bira 15y ago
    Start doing some SEO for your company name, if that's your concern. How: - comment using your company name as name and your website name in the website whenever you can (don't worry about nofollow links). - publish as many articles as you can (original, unique content) on as many good article directories you can find. In your article use your company name as anchor text and link to your homepage. - Search on Google a good list of web 2.0 properties and start publishing articles (one article/property is fine, more is better) in the same way. Anchor text: company name linking to the page you want people to see when they type your company name on Google. This is really basic stuff, but if you are new to the thing it may keep you busy for a while. Feel free to ask for any clarification or some other tip, I'm dead sleepy atm, signing off.
rprasad 15y ago
A former colleague handles IP matters like this. She's a startup lawyer, so her rates are generally competitive in the price range you're thinking of. Here's her contact info if you are interested: (323) 929-7185 linda@cambrianlaw.com
- owmytrademark 15y ago
  Thanks! Will do!

7 points by owmytrademark 15y ago

larrys 15y ago

My suggestion since this involves essentially a domain name is to file a UDRP to get control of her domain. Of course nothing will prevent the person from registering a different name but you aren't going to be able to handle the cost of the trademark case. Cost of a UDRP should be $5000 including attorney fees.

owmytrademark 15y ago
I think that I'm going to start by filing infringement claims with the various services that she uses (she doesn't host her own site, she uses a service.)

staunch 15y ago

Consider talking to the person (with legal advice first). Maybe she'd change her name if you paid for the cost of switching? Probably cheaper than legal action.

owmytrademark 15y ago
I don't thank that it would help. After contacting her to tell her that we were already using the name, she went out and registered it on just about every social media platform (that she hadn't already registered) and put up a blog post announcing her "exciting" plans to incorporate our business model into her own.
- Tangaroa 15y ago
  Make copies of that blog post, your email to her, and your published materials at the time which discuss your business model. You can use it to allege willful infringement. Have records of your earlier use of the name and your earlier use of the tagline and any other marketing slogans that she is using. Make a list of all of the social media apps that she has registered using your name after you asked her to stop using it. Contact them all alleging trademark infringement and ask them to shut down the account or rename it. See if Nolo Press has a book on trademark disputes. If she is using your marketing materials, I think you have good cause for a civil case. I am not a lawyer and this is not legal advice. Also, build up your business to be better than hers.

nostromo 15y ago

Honestly, I'd spend little to no time on this. Startups do not live and die based on the uniqueness of their trademark. Your time is better spent working on your product. If / when you get real traction, you'll have enough cash to get this resolved.

owmytrademark 15y ago
My biggest concern is that she's starting to push us further and further down in terms of google results. She has been getting so much press that we're barely on the first page anymore.
- bira 15y ago
  Start doing some SEO for your company name, if that's your concern. How: - comment using your company name as name and your website name in the website whenever you can (don't worry about nofollow links). - publish as many articles as you can (original, unique content) on as many good article directories you can find. In your article use your company name as anchor text and link to your homepage. - Search on Google a good list of web 2.0 properties and start publishing articles (one article/property is fine, more is better) in the same way. Anchor text: company name linking to the page you want people to see when they type your company name on Google. This is really basic stuff, but if you are new to the thing it may keep you busy for a while. Feel free to ask for any clarification or some other tip, I'm dead sleepy atm, signing off.

rprasad 15y ago

A former colleague handles IP matters like this. She's a startup lawyer, so her rates are generally competitive in the price range you're thinking of. Here's her contact info if you are interested: (323) 929-7185 linda@cambrianlaw.com

owmytrademark 15y ago
Thanks! Will do!