Trademark challenge?

Jaguar7 said:
I have registered 1 trademark, so that makes me an expert. Did this guy register your exact name, spelling, and spacing, etc.? Because you stated he registered "similar". I'm 90% sure it has to be exact for him to even have merit.
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You "might" find it confusingly similar (if you're an idiot). I'm trying to avoid outing the exact details here, but lets just call the two sites "American Widgets" vs "US Widgets", where "Widgets" are the same product/service. All the other potentially conflicting trademarks using the word "Widgets" are for different products/services.

The issue derives from the potential confusion between American and US.

Just for example, if the confusion was between "American Rifles" and "US Rifles", I'm not sure how close to infringement that would be, given that US and American have very strongly related definitions.

If I were to sue him, he has already shot himself in the foot by making written statement that he is personally confused by the similarity.
 


Amoxicillin said:
You're really going to compare the coffers of Nissan Motors to some douchebag in Cali? Come on bro...
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A trademark is a trademark. Even though Nissan Motors has the trademark for Nissan in regards to cars, Nissan Computers has it in regards to computers. Nissan Computers bought Nissan.com, and Nissan Motors - a somewhat big brand has been trying to sue the guy into oblivion for over 20 years. The whole story is on Nissan.com. What you don't seem to understand is you don't have a trademark, you never bothered to do it and the other guy was actually awarded the trademark.
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Amoxicillin said:
I'll repeat myself, and give a timeframe for reference..

2005 March - I bought MY domain name (something.com)
2006 April - First archive.org listing of MY domain, showing usage of the site in the same way it is today

2006 May - Douchebag registered his domain (similar.org)

2011 October - Douchebag filed "similar" as a trademark
2012 March - Published for opposition
2012 September - Full registered trademark

There can be zero argument that I was first to use the trademark. I've got proof of commerce before he even registered his domain.
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I highlighted the part where people reading this need to understand. Since he was granted the trademark, you've got an uphill battle. You never contested the application, which people can do when clowns pull stunts like this.
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Fatbat said:
If you have been using a mark in commerce for years, you don't necessarily need to trademark it to protect it. This is a typical "reverse hijack" on your name and you should seek proper legal advice.

I'm not so balling out of control that I would ignore an attack on a 4 figure a month website and if I had the means I'd fight the fucker tooth and nail out of principle. YMMV.
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Exactly.

It's not like you have a trademark and he has one. You don't have shit except for the domain. Do I think you're in the right, yes - but that doesn't mean you don't still have an uphill battle with this. From your own questioning it's clear you don't have the slightest clue how fucked you are, hence why you asked this on a forum. You can cry and bitch all day to me about how you think I'm wrong - but I'm not the judge and my money is on him. You are most likely going to lose the court case, simply because he was granted the trademark which you neglected to get AND neglected to oppose his application (that's what the trademark waiting period is for, to hear opposition of the application).

Just Google the shit: How Long Before a Trademark Is Approved? | eHow

During the 30-day period following publication of the notice, third parties may object to your application by filing an opposition. An objecting party will claim that the Trademark Office should not register your trademark because the trademark will harm it. The appeal board will review the opposition and decide whether to approve or deny the registration of your trademark.

If your approved application is unopposed or unsuccessfully opposed, the Trademark Office issues a certificate of registration and publishes notice of the trademark registration in its Official Gazette. For unopposed applications, it takes the Trademark Office about three months to issue the registration certificate, measured from the date of application's publication in the Official Gazette. If the appeals board approves your application after reviewing an opposition, the time frame for registration issuance will be longer, depending on how long the review process takes. Although it's possible that the Trademark Office will issue a registration within eight months, it cautions "[t]he total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application."
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First thing anyone with a brain is going to ask you is why you didn't oppose it...

Good luck bro...

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He can't sue you, You can't sue him. Well of course you can sue anyone for anything, but nothing will happen. It needs to be exact. I was just watching a shoemoney video, and he said that no one can use "shoemoney" but they can use "shoe money". Don't you think he would have went after those "shoe money" people if he could? That is potential confusion to the max. I guess potential confusion means nothing. Go ahead and trademark your domain if you haven't already.
 
CCarter said:
Exactly.
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We're not saying the same thing man. I'm no lawyer, but I believe that just by the fact that OP has been using the name in commerce for years he is granted some common law protection even without filing for a trademark.

That's the difference between TR and R.

From Wiki...

"™ - Signifies common law trademark rights. Businesses automatically receive common law trademark rights by using a brand name or logo in the normal course of commerce."

and...

"Trademark protection depends on use in commerce, not registration. Both registered and non-registered trademarks are both eligible for protection under the Lanham Act."

Both very important points.

Talk to a lawyer.
 
Fatbat said:
We're not saying the same thing man. I'm no lawyer, but I believe that just by the fact that OP has been using the name in commerce for years he is granted some common law protection even without filing for a trademark.

That's the difference between TR and R.

From Wiki...

"™ - Signifies common law trademark rights. Businesses automatically receive common law trademark rights by using a brand name or logo in the normal course of commerce."

and...

"Trademark protection depends on use in commerce, not registration. Both registered and non-registered trademarks are both eligible for protection under the Lanham Act."

Both very important points.

Talk to a lawyer.
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Yeah, I was really referring to your part on the "reverse hijack".

I agree the OP needs to talk to a lawyer versus asking the WIA legal team. Still the fact remains, the OP had time to oppose the trademark and he didn't. He also could have gotten the trademark before the douchebag, he didn't. Douchebag has been granted the trademark... So uphill battle.​
 
if you bonafide use pre-dates their shitty trademark keep cool and send them to googlehammer if it's live lol
 
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Step 2. Speak with Aaron.
Step 3. ?????????
Step 4. Profit.
 
CCarter said:
It's not like you have a trademark and he has one. You don't have shit except for the domain. Do I think you're in the right, yes - but that doesn't mean you don't still have an uphill battle with this. From your own questioning it's clear you don't have the slightest clue how fucked you are, hence why you asked this on a forum. You can cry and bitch all day to me about how you think I'm wrong - but I'm not the judge and my money is on him. You are most likely going to lose the court case, simply because he was granted the trademark which you neglected to get AND neglected to oppose his application (that's what the trademark waiting period is for, to hear opposition of the application).
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The reason for the question in the first place, was because I was hoping someone here had run into a similar case. There is a ton of information around about opposing a trademark during the registration process, but little to nothing about opposing it after 180 days. I'm interested in experiences post 180 days, hopefully someone here can relate?

CCarter said:
First thing anyone with a brain is going to ask you is why you didn't oppose it...
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I can't oppose something I don't know about. Common law protection, and common sense means I'm not going to check the USPTO regularly to see in the off chance if someone is registering a trademark that might conflict with what I own.

Also, since the trademark is "American Widgets", I'm not going to go searching a shit ton of pages under "Widgets" just to see if someone tried to register a vaguely similar name.

You are correct in the uphill statement, however the guy has no reasonable chance in court.
 
Just get someone who actually knows what they are talking about to look at the trademark award. Chances are it was issued based on the logo or the way the words are formed rather than the actual words. In whichcase, a simple letter from your lawyer pointing this out and telling him to suck your disk should suffice. Of course I don't know your situation but I have contested a couple of trademark infringement threats and won.
 
Amoxicillin said:
The site has made me somewhere in the range of about a half million USD since 2005. It's definitely not a priority site by any means, but it's making at least four figures a month right now.

It's not that I'm worried about him, it's that he decided to DMCA me. He filed a DMCA notice with my hosting company and attempted to have me shut down. I filed a coutner-DMCA notice and my hosting company has hence ignored the guy.

The way the cock smoker put it was "I will sue you, but first I'm going to have your hosting company shut you down." Little did he know, my hosting company is colo and they don't want to lose a customer with multiple racks.
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I have a good reference for an intellectual property lawyer. PM me and I can put you in touch. He handles trademark stuff all the time.
 
butcher said:
Just get someone who actually knows what they are talking about to look at the trademark award. Chances are it was issued based on the logo or the way the words are formed rather than the actual words. In whichcase, a simple letter from your lawyer pointing this out and telling him to suck your disk should suffice. Of course I don't know your situation but I have contested a couple of trademark infringement threats and won.
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Good advice, that's the kind of response I was looking for here.
 
CCarter said:

Yeah, he can sue you, and he will probably win unless you have a boatload of money. Especially if you didn't contest the trademark app. AND you don't even have a trademark... Go to Nissan Computer Corporation and see what happened to Nissan Computers, and they DID have a trademark... Nissan Motors has been attacking them for over 20 years...​
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This was an interesting trademark case Burger King (Mattoon, Illinois)
 
For someone who made 1/2 million you should be registering your own trademark to protect it.

I already looked into trademarking my domain, but because the words in it are "clearly descriptive" the trademark can't be registered. This is fine as nobody can sue me for it.

I would definitely talk to a trademark lawyer. I doubt they have any case, but better to get some real legal advice.
 
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