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[rcoleman9484]

Hello everyone.  I am very upset and freaking out about this situation. Can someone please give me some advice?

I have been running a paranormal investigation group for 2 years now.  We do not sell goods, but we do provide services free of charge to the general public.  We have a website that is copyrighted, have been in newspapers, magazines, and even on the most popular radio station in our state.  Our name is VERY popular and has been in the community for 2 years now.

Last year, 2 members joined our team and it didn't work out. We fired them and actually encouraged them to start their own group.  For a hypothetical example, Alabama Paranormal Investigators Society vs Alabama Paranormal Investigators. (Same state named) They did this out of maliciousness and revenge.  As you can tell, our names are VERY SIMILAR, the only difference being our name has Society tacked on at the end.  It is clear to all that we have been around much longer than they have.  We have had business cards, brochures and many other advertising methods distributed in the community.

We did not think that we would need to Trademark or register our name, because it is a not-for-profit sort of hobby group.  Think of it as a club.  We have had a LOT of publicity in our state.


This morning, I received a Cease and Desist letter from this group, and apparently they have gotten the Federal Trademark on the name, as well as registered as a Sole Proprietorship.   It was not from an attorney, just a homemade letter threatening legal action.


My question is this: We have been around for a lot longer. They were once part of our group and are clearly doing this to destroy us out of revenge. Do common law trademark rights apply to us?  Would it be considered Willful Infringement? We have been around longer than they have, are well-established in the community, and our website has been around more than a year longer than theirs.  We did not think of using a TM symbol or registering as a trademark.  We are just doing this locally in our state, no plans on expanding elsewhere.

Do they have any grounds for this?  Can we fight this because it is obvious that we established this name first? Or does their Federal Trademark wipe us off the map?

Someone please help….we have worked on this group for the last 3 years with blood, sweat and tears. We are college students and clearly don’t have a lot of money (the #1 reason they are going after us) and are just doing this to help people.  When they signed up for a Federal Trademark, they KNEW that we existed yet trademarked a name identical to ours.

Please help….

[MYK]

Yes, you have common-law trademark rights.  First in use, first in right, and theirs is pretty clearly "confusingly similar".  From what you've written, they are behaving maliciously and willfully.  You would most likely be able to get their federal registration cancelled.  You shouldn't sit back and do nothing, because that could be considered acquiescence.  It will cost you some time, and may cost you some money (at least enough to file an opposition with the TTAB), unfortunately.

Linux (the operating system) had something similar happen -- some weasel registered "Linux" federally, then tried to sue various Linux groups over their use of "his" trademark.  The USPTO didn't look kindly upon him.

Disclaimer: I am not a TM type of nerd, just someone who has nothing better to do than read an IP board at 9pm on a Saturday night.  With any luck, one of the real TM types around here will chime in and correct any errors I have made, probably on Monday.

[Lyza]

rcoleman9484,

There are a ton of state-specific websites with the same end part of the name you mentioned for the same and/or similar services, and there are several trademarks, both in application stage or registered, on file at the USPTO.  One is in the publication stage at the moment, and if it is them, you need to act now because this is when you can keep them from acquiring a registration.

I am not an attorney, but from my experience, common law use and rights can trump even a registered mark.  The test for infringement would be confusion among consumers between you and them in your marketplace.  Since you have an established presence in your market, would consumers be drawn to them by mistake?

It could get pricey if you end up in full litigation, but then again, this is a business whether non-profit or not, and you must make the choice of whether you or they have the stuff to tough it out or be driven out.

I would strongly suggest you contact an attorney and go after the cancellation of their registration, if it is in fact registered, or stop the mark from registering in the first place.  This may also afford you the ability to go after their business for lost revenue.  An attorney's letter to the other party ("OP") will carry a lot of weight in countering the OP's presumption of going after you on their own.  If their mark is not yet registered, you need to find out where it is in the prosecution process.  The OP may be unaware that their application can be stopped during publication, or if the mark has already registered, can actually be cancelled based on infringement of your common law rights.  A qualified TM attorney can help you with this.  DO NOT try to do this alone or you may say/agree/admit to something you should not. 

Please also go back and remove anything from your post (such as any name or part of a name) that could be used to warn the OP you are seeking counsel.

Good luck.

Lyza

[rcoleman9484]

We just simply do not have the funds to go into an all-out legal battle.  We encouraged them to start their own group, and they steal our name and then attempt to TM it and THEN send us a C&D letter. This HEARTBREAKING.

We have a Cafe Press presence, a very popular website, been interviewed by a production company for a documentary, etc. I can't believe they are doing this to be malicious.  People are evil.

In response, yes. We have received many emails since they entered into our market...people who have mistaken us for them and vice versa. We did NOT have this problem until they stole our name. The sad thing, is that we tried to take the high road and REFER these people to the other group. Like I said earlier, we are just two college kids who established a popular paranormal research group....we didn't expect it and we didn't think we would NEED any sort of business trademark, etc.  But now, seeing this project ripped out from under me because of this is so devastating.  I just hope we have a leg to stand on....but financially, we don't have a lot.

Thank you for your advice.  They were approved for TM last month.   The letter they sent us included a trademark registration. The process was completed without us even KNOWING or suspecting it.

[MYK]

I find it rather ironic that theirs is listed as a "live" mark, rather than a "dead" mark.

Just a little graveyard humor there.

[MYK]

Sent you a private message.  Please do check it.

Oh, and as Lyza suggested, delete the identifying information in your post.  You don't want your opponents to Google this discussion and learn of your discomfiture and strategy.

[rcoleman9484]

lol nice graveyard humor

Thank you for the PM. I will answer shortly.

I did edit the above post. Please send me a PM if anything needs to be changed.

[MYK]

Lyza, it looks like the mark was added to the Supplemental Register, and as such, it can't be opposed, but instead RC has to file a petition to cancel the mark.

Still, the other side has paid at least $275, and perhaps more, to file for the mark, and will lose its mark in the long run.  I'm admittedly just a student, but given the facts presented, I don't see that they have any chance in keeping it, as long as you diligently go after them for their attempted hijack.  In addition to filing the cancellation petition with the USPTO, I'd further suggest a lawsuit in which you request an injunction against them to stop them from using any similar name, and that you request that the court award the other side to pay your attorney's fees due to their rather blatant bad faith.  You might even skip the cancellation petition and make them do that themselves after they lose.

Should be a lot of fun!

[rcoleman9484]

Good news!

Just found the word document we used to draft the letter in which we fired them. It was dated 6/17. They applied for their federal trademark on 6/21. We fired them and they stole our name, started their own group AND applied for the TM 4 DAYS LATER!  We also found videos, pictures and other evidence that proves they were with our group.

Think that's enough for a willful infringement?

[Lyza]

Again, neither MYK nor I are attorneys and you should not be planning any strategy by anything we have said here.  Remember also that action, based upon musings on a general internet forum, should NEVER be taken without having sought out first the advice of a licensed attorney skilled in trademark law and to whom you have provided the full facts of your case.  You would be foolish to proceed outside of the umbrella of such expertise.

Yet again I say that going it alone could cost you money as well as rights!  Fair warning!!!!

Lyza

[rcoleman9484]

Absolutely understood!

We are seeking legal counsel on Monday morning....this just all happened over the weekend so we were trying to get a feel for the situation before then.  Definitely not going to go it alone and will be seeking actual legal counsel