Trademark Assistance - Faze MMA Gear | Phase MMA Wear
Legalzoom states on their website that they will do a check to ensure no websites exist that might conflict with trademarks.
Legalzoom contacted me and first said I got the trademark then later revoked it and said that someone else filed one that was similar in name to mine. For instance "Faze and Phase" both in the clothing category which might cause confusion.
If my domain name was secure and up and running AND they processed my trademark first - they should have known that the other guy may have filed his trademark with a domain name already sharing the same name.
9 attorney answers
Don't feel too bad about Legal Zoom. Working with them is just a roll of the dice, and you rolled snake eyes. Many people don't.
Your case may not be hopeless. See (or call one of us and spend a few dollars on a good consultation. It may be that you can yet get a reasonable result.
I'm not your attorney; my answer includes assumptions. If you want me to be your attorney, I'm easy to find.
A lot of help Legal Zoom was huh? You should discuss the particulars of your situation over with a lawyer in private so everything is clearly understood. But let me give you my two cents on legal zoom and other non-lawyer quickie services and I appeal to your common sense. Any business that calls themselves "legal" anything and uses a tagline like "we put the law on your side" or "legal is here" but has to BY LAW disclaim that they are not lawyers and they CANNOT offer any legal advice is essentially peeing on your leg and telling you that it's raining. It's dangerous and I have seen many instances where we were asked to clean up messes made by these companies and at that point it costs the client a lot more than it would have to just handle it the right way.
That said, your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox Business News on the importance of the due diligence process and our overview guide.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
Legalzoom does not (1) do a full-blown clearance search for both registered and common-law uses that may be similar before filing (2) offer you legal advice and analysis, or (3) carry malpractice insurance to potentially compensate you for bad advice.
You need to avoid further self-help remedies (like legal advice from a public forum where your competitor can use the information you wrote against you) and call in the big guns to sort through your problem. Note that merely obtaining a URL DOES NOT confer trademark rights in and of itself. If you are selling goods, only actual sales of goods in interstate commerce will confer federal rights, not merely advertising those goods.
People think they will save money by using non-lawyer websites for legal services, but this is what happens; if you had spent a few hundreds dollars more on a lawyer you would not have this headache and set back to your business. I hope you get things sorted out, good luck.
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As a first step, I recommend putting your bad experience with legal zoom behind you. Your question suggests that you feel wronged by it and entitled to redress of some sort. Pursuing this is not likely to be fruitful, and will cost you too much in terms of time and mental energy. Just move on and deal with the real problem that you now have.
You will need to discuss this situation with a trademark lawyer immediately. There may be steps that you can take, and some of them are time sensitive. Your trademark lawyer should, however, want to talk with you about the realities of a trademark dispute including likelihood of a positive outcome and the cost of obtaining that outcome.
Trademark rights are acquired by using the mark in connection with goods or services in a specific geographic area. Registration provides a presumption of the exclusive right to use the mark throughout the entire country, but that presumption is rebutted by rights which are based on actual use and predate the application filing date. Registration of a domain name is not use of a trademark, but is only use of an internet address. A domain name only becomes a trademark when used as a trademark rather than just as a domain name.
It is unclear from the question whether you have only a domain name registration or a functioning website. The latter might be helpful but also might not be enough to show significant rights through actual use. I would hesitate to recommend going through the expense of opposing the other application on that basis.
It appears that your options are waiting to see what happens with the other application, or picking a new name now. Which you choose should depend on how much or little you have invested in your current name, and how long you can afford to wait.
Before choosing your next mark, get a proper search done by a trademark attorney. The searches I have seen from do-it-yourself services were less useful than the searches that the vast majority of trademark attorneys would obtain. Using an attorney also means that you will have the benefit of that attorney's advice in choosing a mark and evaluating the search results.
Your reputation will be tied to your trademark, and you will spend far, far more in advertising your goods under the trademark than you will to properly protect your trademark. Doing this right not only ensures that registration goes smoothly, but also ensures that you are unlikely to receive a cease and desist letter from someone else claiming superior rights to the trademark.
If your trademark is important to you and your business, I would highly recommend seeking counsel on this who understands the trademark process and can assist you in securing your trademark given the set of circumstances you are faced with.
While there is no guarantees that you will get the trademark, it is in your best interested to seek counsel.
I don't mean to be smart, but you are about the 100th person who has gone to Legal Zoom for trademark help and wound up with it getting screwed up. We could all tell you what you SHOULD have done or what Legal Zoom should have done but did not, but sadly, having a domain and owning trademark rights are totally unrelated. And anyone who does not tell you to do a decent search before you file a trademark application either does not know what they are doing or doesn't care if you get a trademark. I won't hazard a guess on which it is. This time, go to a decent trademark lawyer, do a search and then register your domain and file for your trademark at the same time. Good luck.
This issue would depend on who was actually using the mark in commerce first, not who was the first to file. If you have senior rights, there are several ways to respond, depending on the progress of the other mark's registration. At this stage, you should consult with a trademark attorney to evaluate your next step.l
The response by Bryan Bockhop is given for general information only and does not constitute legal advice. It does not form an attorney-client relationship with any reader and it may not be relied upon any person reading the response. One should seek the advice of competent counsel before taking any action related to this inquiry.
LegalZoom is a service that helps in filing applications to register trademarks (among other things).
You should speak with a trademark attorney promptly, to review your application, the other application, and what your next steps could be. Don't disclose details of your application here.
Use Avvo's Find A Lawyer feature, or ask people you know for an attorney recommendation.
Anything I post on Avvo, a public forum, is intended as general information based on the facts provided, and is not legal advice or a legal opinion. My posts do not create any attorney-client relationship, and any contact with you beyond these posts will start with disclosure of opposing parties to allow me to check for conflicts. You should not rely solely on these posts to take or not take any particular action. You should speak with a competent attorney before taking further action.