Trademark Question......

I already own a registered trademark onmy company name....have for 9 years.

Recently, I've had some problems with an infringer using part of the whole name to name their own company, and products they make, and claim it's not infringing because their use does not include the entire name that I have TM'd.

I say use of even part of the name for their same classification of goods company, or same classification of products *IS* still infringing.... Am I wrong? If so, can I shorten my TM name to better protect myself? And what is involved with that process at this point?

I know this would be easier to describe if I used the actual name to illustrate, but I don't really want to post it publicly here. Would reveal in a private e-mail.
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Answers (3)

Dana Howard Shultz

Dana Howard Shultz

Contributor Level 7
It's certainly possible that use of part of your company's name could constitute infringement but, as you noted, without knowing the specific trademark and the portion that the other company is using, it is impossible to provide a definitive answer.

You should retain counsel in your area who is familiar with trademark matters to analyze the facts and advise you.

Disclaimer: This post does not constitute legal advice and does not establish an attorney-client relationship.
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Pamela Koslyn

Pamela Koslyn

Contributor Level 10
Trademark infringement requires a nuanced analysis, and without knowing how much of your TM this other company is using, and being able to compare the respective, look, sounds, and meaning of the two competing uses, there's no way to advise you of there's infringement here. Everything about how a mark is used counts - if there is more than one word (if so, the first word is most important), the order of the words, the spelling, the pronunciation, punctuation, etc., etc. Two marks don't have to be in the same class for one to be infringing on the other, but if they are, a finding of infringement is more likely.

One indication of infringement is evidence of actual consumer confusion: Are you aware of any of your customers who, in looking for you, found them, and relayed to you that they weren't sure if they had the right company? Or vice versa?

You can't now shorten your existing TM. You can apply for a new shorter one, but it's not necessarily true that a shorter mark is more distinctive and easier to protect from infringers.

You need to hire an IP lawyer so you can disclose the particular facts of your TM and use, their TM and use, and the infringement communications, and get some specific advise.

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.
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Jeffrey Thekdi Gedeon

Jeffrey Thekdi Gedeon

Contributor Level 4
As stated previously, you certainly can apply for a trademark registration of the shortened name. However, simply filing for defensive purposes will be unsuccessful. The USPTO will refuse the application if you are not actually using the shortened name as a trademark. You need to have marketing materials or other examples of your use of the shortened name in association with the sale (or offer for sale) of your goods and services.
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