My startup company is being accused of trademark infringement

Asked over 4 years ago - Lynnwood, WA

We are a startup, and we have a service that basically is in big need. To protect parties involved, will use fictitious names and words describing the incident.

General Product:
Ex: Hard Drive

Company X has a name of:
HardBack Records

Our name (changed slightly):
HardBack Recovery

Yes, we are in the same industry, but the first two words are generic in nature to say they have dominant use of it. They filed back in 2004, and supposedly have built a reputation for providing the service. They said customers come to them confusing us with them. Wow, I see it as an opportunity to steal from us.

Anyhow, we are asking around. To see what we should do. The companies involved are on different states. We have however are building a fast and strong brand online using social media

Attorney answers (4)

  1. Daniel Nathan Ballard

    Contributor Level 20

    1

    Lawyer agrees

    1

    Answered . Assuming that the other company's trademark is valid -- and especially if it's registered [see uspto.gov and follow the links after "search marks"] -- then far from them stealing from you, you're likely infringing on their rights.

    The fact that your company is a start up and is filling a "a big need" is irrelevant. You should have done a trademark search before branding your service. The consequence is now that the other company has you on its radar screen, you need to hire a trademark attorney to get you out of the mess that you created.

    As for whether the other company's mark is valid or not because you think it's "generic," as my colleague has noted, that's not a conclusion you're competent to make. Whether a mark is generic or not is an issue that highly skilled trademark attorneys fight over and which competent judges disagree when viewing the same facts.

    Good luck.

  2. James Juo

    Contributor Level 16

    1

    Lawyer agrees

    Answered . Trademark rights usually go to the earlier (senior) user of the mark on the goods or services, and trademark infringement is based on a likelihood of confusion between the marks. You started using a similar name for the same products and services several years after Company X, with evidence of actual confusion between the two. As the junior user, you may be on the short end of the stick. Especially if the other side filed for and obtained a federal trademark registration on the name in 2004. And, if you were aware of the other company's mark when you adopted your similar mark, willful infringement may be an issue. You should ask around for a trademark attorney to discuss about your specific situation. This is for general informational purposes, and is not intended to create an attorney-client relationship.

  3. Bernard Samuel Klosowski Jr.

    Pro

    Contributor Level 12

    1

    Lawyer agrees

    Answered . In addition to the previous comments, you state that "the first two words are generic in nature," but that is a legal determination. A good example of a "generic" word for marking goods is "apple" when used to sell "apples." However, if "apple" is used to sell computer hard drives, the word "apple" then falls into the "arbitrary" category of trademark law, which can make it a registrable (protectable) trademark. Additionally, actual use in commerce of a word over a long period of time can transform a weak or merely descriptive word into a protectable trademark. Coca-cola is a good example (a derivative of cocaine was used in the original product). So, it's risky for a layperson to assume that a word is "generic" or "merely descriptive" - that determination requires legal analysis. And be advised that trademark infringement suits can be very expensive, so you should run, not walk to your intellectual property attorney. Also if you delay or don't respond to the other side, they may sue you in their state, which will only increase your costs and inconvenience to defend.

    Good luck.

    Per the AVVO terms of use, this general information does not constitute legal advice nor establish an attorney-client relationship. Consult an attorney for personal legal advice.

  4. Bernard Samuel Klosowski Jr.

    Pro

    Contributor Level 12

    1

    Lawyer agrees

    Answered . In addition to the previous comments, you state that "the first two words are generic in nature," but that is a legal determination. A good example of a "generic" word for marking goods is "apple" when used to sell "apples." However, if "apple" is used to sell computer hard drives, the word "apple" then falls into the "arbitrary" category of trademark law, which can make it a registrable (protectable) trademark. Additionally, actual use in commerce of a word over a long period of time can transform a weak or merely descriptive word into a protectable trademark. Coca-cola is a good example (a derivative of cocaine was used in the original product). So, it's risky for a layperson to assume that a word is "generic" or "merely descriptive" - that determination requires legal analysis. And be advised that trademark infringement suits can be very expensive, so you should run, not walk to your intellectual property attorney. Also if you delay or don't respond to the other side, they may sue you in their state, which will only increase your costs and inconvenience to defend.

    Good luck.

    Per the AVVO terms of use, this general information does not constitute legal advice nor establish an attorney-client relationship. Consult an attorney for personal legal advice.

Can't find what you're looking for? Ask a Lawyer

Get free answers from experienced attorneys.

 

Ask now

28,167 answers this week

2,988 attorneys answering

Ask a Lawyer

Get answers from top-rated lawyers.

  • It's FREE
  • It's easy
  • It's anonymous

28,167 answers this week

2,988 attorneys answering