Trademark Infringement

[GMercado]

I own a company which I purchased the .com name in 11/08, in Feb/09 I incorporated the name and in July 29/09 I trademarked the name as a text trademark since no one else had it. I own a paranormal service which has received TV exposure on various news networks and I am on top of all search engine results.

Yesterday I noticed that some individual is using my trademark name since july1/09 in a .com, yet he has mlm in front of the name...

Example:

If my trademark was a text service mark such as, Joe-schmo (which it is not) and I own Joe-schmo.com, joeschmoe.org, joeschmoe.net and his .com is called mlmjoeschmoe.com would that be considered infringement?

Even though his business is not my type is business I feel it may affect my business. Those that know us on the web, you tube and so forth know who we are and what we do. We are not affiliated, associated with any form of MLM - multi level marketing, pyramid schemes nor wish to be confused to be part of that industry. Our members are business owners, law enforcement personnel and ex Federal personnel not multi level marketers and some people may perceive that we are associated/affiliated with them or do this type of business on the side. His .com name was purchased in July 09 and has yet to be developed.

Do I have a case to prevent that user from using that website out of fear that it may make people assume that we are associated. We have two books in the works and a few film projects in the near future as well as upcoming news features and that last thing I wish is some form of confusion.

As of yesterday my trademark got to the status where someone can oppose it. Does he have a case to oppose it if I were to pursue hom on this? And what would the outcome be? Like stated I worked my butt off for the last 1.1/2 to get us to the status we are in to have someone use our name for multi-level marketings.

My business is in Florida but known worldwide via the web, his is in Georgia and was formed prior to my purchasing of my .com and incorporation. Furthermore my businesses a non-profit group which charges no fee for services rendered, yet receives money from donations from locations, media and businesses who donate for sponsorship. We do not wish people to assume we are doing a mlm money making business in any way. I have another company which handles events, clothing, gear and sales which I profit from in this field which has a different name. This allows me to run my non-profit business for those in need free of charge.

[LawResearcherMissy]

Similarity of name alone is not enough for a claim of infringement. You would need to be able to show that his business and use of the name is similar enough to your business as to cause confusion.

His business was also formed before yours, which might prove a stumbling block to you.

If you're that fearful, consult an attorney in your area who specializes in Trademark law - you ought to be doing this anyway, as you're registering a trademark.

[GMercado]

Similarity of name alone is not enough for a claim of infringement. You would need to be able to show that his business and use of the name is similar enough to your business as to cause confusion.

His business was also formed before yours, which might prove a stumbling block to you.

If you're that fearful, consult an attorney in your area who specializes in Trademark law - you ought to be doing this anyway, as you're registering a trademark.

I am sorry but how can you say his business was formed before mine.

Mine was formed in Nov 2008 and incorporated in Jam 2009.
His was made on July 1 2009, which was almost 6 months later. He saw I owned all the .com names and still he registered it. I only filed trademark in July 2009 un be known he had copied by domain name. Furthermore his business does not have the name mine does, but is named something else. the only similarity is the name of the website which he deliberately created since he could not own my name.

Also he plans to use the name to do training seminars in ML., I do training seminars in the paranormal which are both classes and I do not want people to think it is the same entity. I did however speak with a trademark attorney today who informed me he had no case against me or my trademark since he was informed about the infringement and still continued.

[LawResearcherMissy]

I am sorry but how can you say his business was formed before mine.

My apologies, I misread the dates.

[Mr. Knowitall]

The issue here seems to be that your mark is not industry specific - that is, just as the ABC Warehouse trademark doesn't infringe upon the ABC Television Network's trademark, it's possible to have a non-infringing use of your mark. That's not to say that the use won't infringe - if the company is intending to put up a competing website at that URL, your prior registration would justify your acting against them for trademark violation or in arbitration to take control of the domain name.

Note also that the date of the registration of their URL does not mean that they were organized as a business entity after you, or that you were the first to use the phrase in trade. It's possible that they had a prior use - although again, I doubt within the same sphere of business. If they are a competitor and they were using the mark before you began the registration process, the prior use would constitute a defense to their use of the mark. (I suspect their URL is to convey "We're a really good MLM group" or "We can teach you how to be really good at MLM", not to indicate that they're experts on the paranormal.)

[KeyWestDan]

What exactly is a "nonprofit business"? Never mind.

Date of incorporation is generally meaningless when it comes to trademark registrations. Incorporation itself has no intellectual property protection.

Two things come to mind. As pointed out, trademarks are registered in different classes of goods and services. Secondly, it depends on how good your trademark is. If it is a coined word, it is strong. If it is a common word or name, it is weak.

But any trademark needs to be enforced, otherwise that lack of enforcement is bound to come back and bite you.

I would strongly suggest getting state trademarks in Florida and Georgia. That offers a number of benefits including a choice of methods/forums of enforcement. Having state and federal trademarks strengthens your hand and makes sure nobody else does that.