Forums: Discussions for entrepreneurs and small business.

Glass Doctor and Windshield Doctor each have a federal trademark registration.  They both work in the automobile windshield industry.  Glass Doctor wants to move into a territory where Windshield Doctor is doing business.  Interesting questions about trademark infringement:

1.      Do you think both companies should be able to do business in the same geographical area – or would that be confusing to consumers that might think it is really the same company?

2.      If one company has to leave and one company gets to stay, how should we tell who should be the one to stay – the company that was there first? 

3.      What if the new comer was more famous or more popular than the company that was there already - should that matter?

4.      Is there a difference if one company does windshield installations and the other company does windshield repairs – should that matter? 

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

For what it`s worth. IMHO:

1. Yes, not confusing

2. Don`t think either should leave

3. Nope

4. Nope

R@

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Richard Arnold · Key Concept Writers · Business Communication: The "Key" To Success· Law of Attraction Blog · Life Ain`t Brain Surgery Blog

I would answer the same as Richard.

James, is there a story or lesson behind your question?


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Yes, there is a grand story.  Glass Doctor wins and Windshield Doctor loses.  Not only that, but Windshield Doctor had its trademark registration cancelled.  The basic analysis is that both Glass and Windshield are very descriptive, so the only word that really indicates a "source" is the word "Doctor."  Since they both use the word "Doctor" Glass Doctor wins and is considered the senior user.

Moral of the story?  If Windshield Doctor had registered their trademark earlier, the outcome would probably have been different.  They waited.  They lost.  It`s a familiar story.  Company says "I`ll wait until the company succeeds, THEN protect my intellectual property."  Company waits and loses - and ends up spending more money than if they had hired an attorney early.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

I`m glad there are guys like you who can deal with the government for a living. I don`t think I could do that and keep what sanity I have left. 

James, could you weigh in on this question?


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I`m not sure how much sanity I have left these days myself.  Though the law is supposed to be logical and make sense, it takes some real thought to get there.  Legalzoom and do-it-yourself places ain`t going to expain when and what to register and why.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com