ABC financial Inc registered and owned OhioRealty.com as an internet domain and advertised OhioRealty.com as a brand name since 1998. OhioRealty.com is not a famous company like whirlpool, but they are owned by a big financial comany. They did not register either "Ohio Realty" or OhioRealty.com as a mark before I registered my company named as "Best Ohio Realty, LLC" and obtained the internet domain BestOhioRealty.com in 2003. ABC financial Inc then registered OhioRealty.com(R) as a federal-registered trademark in 2009 and their attorney sent us a letter last week saying that they are the only one authorized to use the mark and my domain and company name may confuse consumers. They demanded us to cease using my company under "Best Ohio Realty" or similar name and internet domain BestOhioRealty.com, otherwise they will file a lawsuit against my company for tradmark infringement and unfair competition.
As we know internet domains are first come first serve. In trademark law, can a later registered domain-name-like trademark make other similar domains infringing? How can an already established company protected its name from a later registered trademark? Should I hire an attorney to proceed with the lawsuit? As a small business owner, I can barely afford the fee and damages they demanded if we lose the case in court. I really appreciate some one can point me a right direction.
For clarity, I'm assuming most of the instances above where you use the word "registered" you do not mean federal registration (except the one case where you point that out explicitly).
Are your fictional examples direct analogies - including use of a geographical name in the marks, and the geographical name being the same for both you and them? Note these things always turn out to be very fact specific and are seldom cut and dried. In your shoes, unless I was just going to roll over and play dead, I'd definitely go find me an experienced trademark attorney. That way I could lay all the facts out exactly as they actually are, and get an informed and experienced opinion. Even if it turned out to be mostly bad news, it might be worth exploring options.
Here are some general considerations. If playing in the same sandbox, it looks like a case where there is a local first user (OhioRealty) and a local second user (BestOhioRealty, possibly confusingly similar but not identical mark). Then, the local first user (OhioRealty) obtained federal registration for OhioRealty.com. So again we come back to the likelihood of confusion scenario, where a local first user (who now has a federally registered mark) can stop a confusingly similar use. (
Unless the concept of laches might apply after 6 years of co-existing use? - anyone??)
This is in contrast to the situation where the two users are not in the same locality. There, if one user obtains federal registration, it may have to allow that other user to continue using at least within that other user's own locality, and the federal registrant may actually be barred from bringing its marked goods into that other user's locale.
Another consideration - if your fictional names are direct analogies (?), then the mark is really not more than a description of the services offered combined with a description of the place they're offered. Note that a mark that's just a description of what is provided normally is tough to federally register. My understanding is that the applicant must show that the mark has developed "secondary meaning" such that consumers know just by the name/mark that it's not just anybody providing "ohio realty" services, but actually it is that particular applicant who is providing the services.
So when you speak with an attorney you might want to have a copy of their application file to see how it was they were able to register (hey, maybe the PTO made a mistake- gasp!). Also, what sort of registration did they get? There are two registers, "principal" and "supplemental", with the supplemental giving fewer rights to the holder.
From the page linked below, you can click on #2 "search marks" and by searching the mark name find their registration, and copy the serial number or registration number (either will do). Then on the same page linked below click #5 "view documents" and plug that serial number (or reg. number) into the space provided to pull up their application file. You can then download all the documents involved in their registration application.
http://www.uspto.gov/trademarks/index.jspAs usual, I'd be much obliged if anyone reading the above wants to add to it and/or point out mistakes.
