Forums: Discussions for entrepreneurs and small business.

Going into court with a defense of "I did not mean it" very rarely helps when it comes to trademark infringement.

Even if a website owner`s intention is in fact non-commercial (though it rarely is), the issue is whether his actions had a commercial effect.  The proper inquiry is not one of intent.  If consumers are confused by an infringing mark, the offender’s motives are largely irrelevant.

Even “minimal” advertisements may constitute use of the owner’s trademark in connection with the advertising of the goods, which the Lanham Act proscribes.

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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 thought that you could avoid such a situation if you happen to be in a different industry than the company with a nearly I dentical tradmark/logo.  Is this correct or not?  I have limited knowlage of such things and I thank you for your insight.

P.S. Nice to meet you!

Sometimes.  That is a hard question to give a blanket yes or no.  I would seek advice in any given situation.

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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

What happens when you have two very small, "unknown" companies, each unaware of the other? I get the idea that putting out a trademark for, say, "Coca Cola" and causing trouble as an effect. But that`s because the coke company is huge, publicly known, and so on.

Suppose we have IB Designs USA and we make our signal flags, but without our being aware of it, there`s another IB Designs Inc. that makes either a) a very different product, like hose clamps, or b) a product at least related in that it`s a textile/fabric item.

If we trademark (somehow) the name or a logo, or product image, what sort of situation would generate a trademark infringement suit?

One potential concept at issue here is "famous" marks.  Those marks that are "famous" can be protected even where the other user makes a very different product.  Barring that, there usually is some sort of overlap that might give rise to consumer confusion at issue.  The overlap can be geographical and commercial.

In actual practice, two very small companies in very different geographic areas making very different products probably don`t have a conflict or care if they do.  What consumers would be confused in such a situation?

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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 was in a similar situation with the name of my online store. ElusiveTreasures.com is also the name of a high end custom jewelry maker. They typically work on designs valued at $100K. They tried to sue me for the dot com name a few years ago. They wanted 3.2 million in damages or something like that.

After getting lawyers involved it was discussed that my products, and web page for that matter, could never be confused to be the same business. Therefore, the case was eventually dropped. Too much expense to show I have actually damaged the other Elusive Treasures jewelry business. I still have my business name, and have heard nothing about it for about 4 years now.

It was a scary situation at the moment for me though.



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Vincent Wilcox (a.k.a. KRAKR)
Drummer
My band: Letters Make Words

interesting case study.  hopefully you are out of the woods [unless the jewelry people hire me, which ain`t likely at this point].

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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

Thanks for the answer.  As I see from the examples here, it is a sensitive issue that must be evaluated by people such as yourself.  Although, there are tools out there that help the business owner search for names before they open, I see it is best to run it by professionals as well.

What about a company that starts with a name first and remains small but another company who is infringing on the first grows very large.  It makes sense to me that the first company would have a stronger case than the stronger company.  But since the second stronger company has more brand name leverage would the first company be technically infringing on them?

Trademark law is territorial.  If there is a very small local burger joint in Florida and another very small local burger joint in Nevada and both are using the same trademark, there is probably no infringement.  Why?  They each "own" their little territory and there is no overlap or possibility for consumers to think the two store owners are affiliated when they are not affiliated.  No blood, no foul.

Now, let one of them REGISTER a FEDERAL trademark after engaging in interstate commerce, and the other guy is "frozen" in his territory and can`t expand into other territories.  Why?  The FEDERAL trademark gives rights in all areas where there is not already rights owned by another.  This is one of the strongest reasons tor register as early as possible.

Would you pay $1,000 to lock up a trademark in a state [and possibly all (50) fifty states] before you even sell a single thing there?  Lots of people would - and do.  It`s called working smart instead of working hard.

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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

Nice!  I never new about the Fed. tradmark thing.  I should say that after hearing all the PodCast that Ihave heard of it but I guess I didn`t remember the name used for it.  Well I guess you answered my question.  Thanks for you time and helping me understand how things work out there. ^.-