Am I trademark infringement and unfair competition?
I got a cease and disist letter from an attorney representing a company that has the same main name as mine . Mine has consuting Group added to the name and their comp has USA Our services are completly different. They demand I change my name. Do they have a case?
Answered Unlikely, but maybe. (How's that for another way of saying "it depends?")
None of us on Avvo can provide a definitive answer to "do they have a case?" What we can do is provide somewhat specific information so you can make a decision about your next step. At the end of the day it doesn't matter if I, or any lawyer that you may hire, thinks the other side has a case -- the other side clearly thinks it does so the decisions you're facing really deal with what comes next. The game has already begun and, like it or not, you're on the field.
Before you make a move you need to objectively evaluate the bad things the other can do if they move forward. Some of those things are (1) filing suit against you (perhaps anywhere in the country if you advertise on the internet), (2) trying to get your domain name transferred to itself if it's similar to the trademark in dispute, (3) demanding that your web host take down your website due to the alleged trademark infringement, (4) contacting whatever state agency handles licensing issues for your profession and reporting the alleged infringement.
Or they could do nothing. But because the letter was sent by an attorney the other side already has dollars invested in the matter. The goal of a good attorney on your side would be to convince that other attorney that his case has no merit (which far too often requires educating that other attorney on trademark law basics) and that moving forward will not only be costly but ultimately futile. Note, however, that these kinds of disputes can often be resolved quite amicably w/o huffing and puffing on either side. Trademark owners are legally obligated to enforce their trademark rights and sometimes (too often) they overreach in those efforts. Pulling them back can be done tactfully.
So ... speak with an intellectual property litigator w/experience handling trademark disputes. Ignoring the letter is a bad idea as is responding to it yourself. Good luck.
Answered if it were possible to simply plug in the variables of adding "Group" versus "USA" to other words comprising a trademark into some formula and come up with a definitive answer about whether one infringed on the other, there'd be no trademark lawyers, a lot fewer federal judges, and none of the 400 examining lawyers who work at the US Patent and Trademark Office. No one asking a trademark infringement question on Avvo should expect anything other than an answer of "it depends, what are all the details of the 2 uses, and what are the claims being made?" Since this is a public site, no one should provide those details.
But your question is notably without details you could've provided, not that it would do very much to change the "it depends" answer. You haven't indicated if the "completely different" services that your company and this other company offers are in the same USPTO international class. You haven't indicated whether your business's name is registered federally or in your state (and if so, when) , and where and when the other company's name is registered, if at all.
There's no getting around the fact that if you want to send a sensible response to this cease and desist letter, you need to see an IP lawyer and disclose everything and get specific advice about your particular situation.
Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.
Answered Notice: The below is for educational and informational purposes only, is not a reflection on or a representation of any views or opinions held by my employer, and should not be construed as legal advice. Nothing herein is meant to create an attorney-client relationship.
As usual, there is very little I can add to Mr. Ballard's thoroughly reasoned answer.
Since trademark rights in the United States stem from use in commerce and since you claim to have started your company in 2008 while the other party has a 10 year old trademark registration, priority does not appear to be an issue (I am assuming that the other party has been continuously using its mark since prior to your first use date). However, the other side would still need to prove that confusion is likely if it plans to succeed in any lawsuit. While paralegal service and disaster recovery appear to be distinct services and, at least as the U.S. Patent & Trademark Office is concerned, fall in different international classes, there are simply too many nuances and unknowns involved to provide more than an "it depends" response. The real question is how important you consider your trademark to be and, using a cost-benefit analysis, how prepared you are to litigate and defend your rights in the event the other company vigorously pursues its claim.
As amply stated, you should refrain from providing too much information on this public forum, but you should also strongly consider retaining a trademark attorney who can provide you with more specific advice under an attorney-client relationship.