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[Ken Walden]

Hello, I have a question about business names being trademarked.  We run a business called Wordsworth Typing and Transcription (whose dba is still technically Wordsworth Typing and Editing though our editors have recently left).  We operate in Vermont, but all of our business is distance around the country and world.

We've just received an email from a company in California called Wordsworth which does writing editing and publishing services, and says they ahve trademarked thier name in California.  Their lawyer says we need to change our name as far as doing business in California and the Internet.

I don't know the specifics of how this works.  Do they have a case there?  Does the fact that our business is marketed as Wordsworth Typing and Transcription (and legally is Wordsworth Typing and Editing) make a difference?  Does the fact that we do different work than they do make a difference?  Does the fact that we're in different states matter?  I know we encountered another Wordsworth company down south and made a verbal agreement with them not to market in the specific area they work in, but I don't know what the legal reasoning behind all this is.  Thanks.

[JSonnabend]

Much of the answer to your inquiry hinges on the dates of first use by you and the other party.  As a general rule, whoever was using the name first (without abandoning it) in a particular area has rights superior to the other party.  Also, the more similar the services offered by each, the more the marks would conflict.

"Wordsworth" and "Wordsworth Typing and Transcription" are essentially the same mark, at least for typing and transcription services.

- Jeff

[Isaac]

I think the issue of use of your business name on the internet can be fairly complex.   Given that neither entity has a federally registered mark, possibly each of you could have rights to use your business names as a trademark in some geographic area.   For example, if you have established trademark rights in the New England area, while the other business was established on the west coast, with still other areas of the country still being up for grabs, I don't see how either entity could prevent the other from using their trademark on the internet no matter who was first to use the name.

Presumably, even if you are willing to use a different name in California or to avoid doing business there completely, you are not so willing to use a different name on the internet.   You might do well to consult an attorney on at least this particular issue.

[Ken Walden]

Thanks for your replies, we may contact an attorney.  To respond to some of your points, they definitely have the first date - they say they've been using the name since 1983, and we have been around since 2000.  However, we are offering differnet services.  We do typing and transcription, yet they do editing, writing and publishing.  Similar fields, but with no overlap.

They feel they've established a regional trademark, it seems.  But since we are an Internet-based company we have a lot of customers in California, and everywhere else. So I don't know how that should work.

Thanks again.

[JSonnabend]

I don't see how either entity could prevent the other from using their trademark on the internet no matter who was first to use the name.

Isaac, what's the geographic market for a company that solicits business from all 50 states via the internet?  Where has that company established its mark?  If the senior user is only in SoCal, can the junior user advertise via the internet there using a confusingly similar mark?

In short, the internet has largely blown away the notion of "regional" use of marks in many instances.  Every mom and pop shop can now be a world-wide market participant if it wants.

- Jeff

[Isaac]

Isaac, what's the geographic market for a company that solicits business from all 50 states via the internet?  Where has that company established its mark?  If the senior user is only in SoCal, can the junior user advertise via the internet there using a confusingly similar mark?

It might depend on whether a service or good is being offered, whether the web site is operated as a point of sale, and even whether business has actually been conducted in a given state.   Given the new information that the senior mark holder has a 17 year head start, I'd be more inclined to expect that the senior mark holder is operating in all 50 states.

I don't disagree with your point,  but I'm not sure your assumptions were warranted based on what had already been posted.