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   Protecting My Own Trademark
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JJamesB
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Protecting My Own Trademark
« on: Jan 1st, 2008, 12:56pm »
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In 1981 I created a word to identify my products and services.  ( I develop/developed custom software, did/do computer consulting, custom built computers (no longer do that) as well as sold software and services from other vendors. My current work is all consulting and sotware related)    
 
Prior to that time, the word did not exist in any shape or form that I could identify. (something on the order of EXXON, CITI, VERIZON - a made-up word)  I have been using that word continually since, including advertising in some magazines with international circulation.  I registered my company with the state of Massachusetts  under the aforementioned term as a DBA.
 
Recently I have noticed that other companies (including two fortune 500 firms)  are using the same term to identify particular services and products, specifically software related, that are very similar to the "basket" of services that I have been offering since 1981.  
 
I have also noticed other sites using the term as a brand name for some technology items that are somewhat related (medical devices of dubious efficacy) and some that are not (A band's name, a line of clothing, a blog writer's pen name, copywriting services, the name of a medical magazine).   I have used the word as my website name since 1999.   Another fortune 500 company is using he same word with a single letter spelling difference to advertise their communications technology related services.
 
In the past, some "mom and pop" websites have attempted to use the term, I sent an e-mail nicely informing them of th infringement and in every case they stopped.   Now there are more of them and the companies are bigger.
 
In all cases I believe that the entities are infringing on both my copyright and trademark rights.
 
I am looking for some advice on how to proceed in (1) getting them to stop using my trade name, (2) possibly being compensated for past infringement. (3) obtaining legal advice that will not cost me my home and (3) Protecting my future rights.
 
Any takers? any suggestions?
 
 
 
 
 
 
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Lyza
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Re: Protecting My Own Trademark
« Reply #1 on: Jan 2nd, 2008, 8:08am »
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I am not an attorney nor do I play one on TV.  Wink
 
That said, if you have not filed for registration of your mark with the USPTO, you should and immediately.  It's more difficult to enforce a cease and desist request or collect statutory damages without a formal registration.  In this case, I would also suggest that you NOT file the application for registration without benefit of qualified counsel.  You might file incorrectly or word your goods/services inadequately and be left without a good basis for going after the infringing companies.  In addition, large corporations will be more likely to take your cease and desist letters seriously if your letter comes from an attorney or law firm.  Be advised, however, that litigation can be expensive, which is why companies with deeper pockets don't often worry about the little guy.
 
If other companies are using your mark or a confusingly similar version for use with different services or goods, you won't have much of a case unless they are also using it to offer goods or services similar to yours in similar channels of trade.  That's why the mark DELTA may be used and registered for airline services, faucets and bath fixtures, and other goods and services.  Counsel will help you decide what to do and how to proceed.  I hope this helps.
 
Lyza
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Lyza L. Sandgren, President/CEO
CanopyLegal LLC
lyza2855@gmail.com
www.canopylegal.com
North Amer. Rep for WebTMS TM Mgmt System
This message should be mistaken for or construed as legal advice.
JSonnabend
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Re: Protecting My Own Trademark
« Reply #2 on: Jan 2nd, 2008, 9:39am »
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Filing for a registration is a good idea as Lyza suggested.  Beyond that, the approach you used previously with the "little guys" could be applied against the "big guys."  You might consider having a TM attorney write and send the letter, as that often has more of an impact.
 
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com
JJamesB
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Re: Protecting My Own Trademark
« Reply #3 on: Jan 2nd, 2008, 3:03pm »
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Thanks for the helpful replies.  Regarding the example of the Deltas, that I somewhat understand since delta is also an accepted part of the English language (with Greek origins, of course) but if I were to sell VERIZON faucets or CITIBOX brand mailboxes, or call a software product CocaCola  - those companies would be all over me, although none of them are in any of those businesses (and those brand names are all coined words).   What's the difference?
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bcapehart
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Re: Protecting My Own Trademark
« Reply #4 on: Jan 2nd, 2008, 3:17pm »
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All good suggestions.  As to past infringement compensation and future issues, there are various routes to take.  A good plan is needed.  One plan would be to look toward one company and try to secure a licensing agreement that addresses past acts and future conduct.  The agreement could then be used as a guild for the other companies.
 
While it is true that bigger companies have deeper pockets, they also realize that litigation is a money hole.  I have represented companies that would always be willing to engage in settlement discussions prior to a lawsuit.  I have, on the other hand, represented companies that have used lawsuits as part of their normal daily business activities. Thus, any plan should take into consideration how each company views lawsuits.
 
I hope this helps.
Brent
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Brent A. Capehart
Patents, Trademarks, Copyrights
Deep in the Ozark Mountains
bcapehart@ozarklawyer.com
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