Re: Re: Domain name/Product Name and a new trademark

Subject: Re: Re: Re: Domain name/Product Name and a new trademark

Comments:
: : : Hello there, : : : I have product that has been commercially available via the web and through our own sales efforts since mid 1998. This product name has been in continuous use in two separate products of ours since this time, not many customers, but customers have been using the product none-the-less. We have also owned the domain name and a few different spellings of the domain since late 1998. : : : Now here's the problem, due to some unfortunate circumstances (an underhanded associate) the product name wasn't trademarked. Early last year we put our trademark application in, only to find that a large company service marked with the same sounding name, different spelling. The trademark office suspended our application, and the other company's trademark has since registered. : : : I contacted the other company and at first they seemed willing to work with concurrent existence, but now decided that they didn't want to as we're in industry. We're not competitors in the least, and in my opinion no reasonable consumer could possible mistake our software for their service. : : : How can it be just that because we didn't have a trademark that another company could push us out of the use of my product name ? : : : : Dennis: The first question I would want to know is whether they have priority in the mark. Did their common law use (i.e., use before they applied for the registration) precede mid-1998 when you first started using the mark? Additionally, it sounds like your company sells goods while the "large company" offers services, which may indicate there is sufficient distinction between the goods and services to warrant coexistence. More information would be needed here. : : As to why they suddenly seem uncooperative, if the USPTO Examiner rejected your application based upon similarity to their mark, unless they are forced to defend a cancellation action or litigate, they won't give you the time of day b/c they can already dismiss your mark and your company for free! : : Hope this helps. : : Scott J. Lebson : : Ladas & Parry : : Intellectual Property Lawyers : : New York, New York : : 212-708-3460 : : Finally, : Dear Mr. Lebson, : M. Arthur Auslander : ELAINE's Workshop® E arly L egal A dvice I s N ot E xpensive(sm)was created to help people like you a Reality Check® up front can save a lot of time money and worry. : M. Arthur Auslander : Auslander & Thomas-Intellectual Property Law Since 1909 : 3008 Johnson Avenue, New York, New York 10463 : 7185480592 : aus@auslander.com : ELAINE's Workshop® : E arly L egal A dvice I s N ot E xpensive(sm) : Reality Check®

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