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[bryanlee]

Names changed to protect the innocent and stupid....

I have a business (BleepingPC Computer Repair) based in Hawaii that provides computer repair and related services.  There is also another business named "Bleepin Computers" based in Connecticut that provides similar services.  The other person has a trademark on the name "Bleepin computers". Is this infringement? 

Since it is not identical it would have to be confusingly similar, but I don't think it is.  Obviously it is similar but i think the distinction is easy enough to make. I am going to consult with an attorney, but I just wanted to get some opinions here.  The other party has emailed me a cease and desist email stating that I am infringing on their trademark. 

[JSonnabend]

It is not wise to post actual trademarks here when you are involved in a dispute.  There is nothing to prevent the other side of your dispute from finding and reading the thread.  I advise editing your post to remove references to the marks at issue.

- Jeff

[bryanlee]

I am not concerned with any fallout from this post unless it directly violates the forum rules.  If so, I apologize.  I am in contact with an attorney, but I was hoping to get opinions (not legal advice) from this community.  I'm actually surprised that no one has chimed in.

[JSonnabend]

No one will chime in because if they make adverse comments, it may bite you in the behind later.  Are you not understanding the nature of the adversarial process you are involved in with the other trademark owner?

- Jeff

[bryanlee]

I'm looking for honest opinions.  If it turns out that it is in fact infringement then I will change my name.  It's not the end of the world as my business does not revolve around the name.  I'm not looking for anyone to take my side or not.  As the title states....looking for opinions.

I don't think that offering an opinion would put anyone else at any risk, but i do appreciate all of the concern for my welfare.

The original post has been edited.

[Kaitlin]

It's good you want to do the right thing here and that you're willing to change your mark/name if you're infringing. 

Problem is that situations concerning trademark infringement often aren't clear cut.  An infringement analysis involves examination of various competing interests:  who is the senior user (and was there a gap in the senior user's use which was long enough to be "abandonment")?  how wide spread are each side's markets--do they each sell only locally in certain areas?, how similar are the products or channels of trade?  how similar are the marks in sound or meaning?  And, many of these questions are fact intensive.

The problem with using real facts in a public forum is that good, honest people may say things about their legal situation thinking they're just "telling the truth" when actually they may be using terms they don't understand or drawing conclusions based on misunderstandings or mentioning something that goes against them while forgetting to mention something that counteracts the hurtful statement.  When a lawyer asks someone not to discuss the facts of a case, they shouldn't assume it's because the lawyer is doing something underhanded and wants to create a fabrication.  Attorneys, admittedly with some exceptions, actually want clients to tell the truth, but they want them to do so at the right time and with the right understanding of what the words they use actually mean -- or can be taken to mean. 

The law does something which can be counter-intuitive to naturally nice people: if you say something that hurts your position, there's an assumption in law that that's more likely to be true than if you say something that helps you.  So if you're in litigation, and you say something -- or say something that sounds like something -- that hurts your position, that statement gets to be included as evidence against you by the other side and not thrown out as hearsay.  And you could very well have an opponent who has no scruples about taking what you've said and twisting it to the worst possible interpretation for your case. 

And, once you've put identifying information that can link you or your business to a discussion like this online, it is possible for a savvy opponent or their counsel to find you. 

[Kaitlin]

Re the request for opinion, without knowing the full set of circumstances any opinion as to the presence of infringement would just be shooting in the dark and not of any real help to you.  As noted above, the infringement analysis is pretty fact intensive and can be rather complex.

Having a better understanding of what goes into an infringement analysis, however, may be helpful.

First and most important is to understand that in the US trademark rights depend on use of the mark, not registration.  You say the other company had a trademark and talk as if you don't, but I wonder if what you mean is that they have a federally registered mark.  If their registration is recent (within the last 5 years) but you started using a conflicting mark earlier than they did, you could have superior rights even if you haven't registered yours.

For example, if you started using XYZ as your brand of groundhogs in 2007, and someone else registered XYZ as a mark for groundhogs with the PTO in 2009, you might be able to get their registration canceled, providing your 2007 use was in interstate commerce and they didn't start their use in interstate commerce till 2008.  Or, again, say they started using XYZ locally in Punxsutawney, PA in 2005 but didn't go to interstate till 2008.  Even if you didn't begin using your mark till 2006, you might still have superior rights nationally if your business went national before they expanded beyond Punxsutawney -- provided you were someplace other than Punxsutawney to begin with.  And even if you are only still operating locally where you started in Podunk, Iowa, you could have the right to keep using the mark in your local area even though they get the mark for everywhere else.

And that's assuming the marks are identical and used on identical goods. 

Now, as for "likelihood of confusion," your apparent confidence that the minor differences can make marks not likely to be confused is unfortunately misplaced.  In determining whether marks are confusingly similar, it's not a side-by-side comparison.  Rather, courts and the PTO try to get inside the head of the relevant buyers who may see one mark here and the other at later time there.  How likely is it they could mistake one brand for the other under circumstances typical of such purchases?  The similarity of the goods or services also plays into this analysis, as well as things like channels of trade and how sophisticated the buyers are.  In essence, the question comes down to whether buyers buying those sorts of goods/services are likely to be confused as to whether the junior user's goods/services come from the same source as the senior user's goods/service.  If so, then the junior user has to give way.


I found a site a today which might be helpful.  It's at http://www.gimmelaw.com/trademark-law and gives a pretty good summary of some of the basics of trademark law.  (I've noted a technical error, but on the whole it's a good explanation.) 

Good luck.

[OMG IP]

As I see it, the use of comptuer repair and computers are descriptive or generic; the comparsion falls out as BLEEPINGPC compared to BLEEPIN.  Adding a "GPC" is probably not enough to save you.