[freudling]

Some guy from the States called me rambling on for 10 minutes about how my business name is "infringing" on his trademarked business name.

He has had a "coming soon" website for years, with nothing there. My name is the same as his (we both have the same last name, and we both use our last names in our business name). My name differs in that I have a "the" in the front of it. He said he will sue me if I don't change my name. I did get my company registered under the name Federally Incorporated in Canada 1 year ago. He said he has been using his name for 10 years.

Since I am in Canada, and he has not trademarked his name in Canada, is this an issue? Also, my name is trademarked under the Canadian Trademark and Patent Office at both the Federal and Provincial level. Also, we are doing two totally different businesses.

Lastly, he is a sole proprietor and is not really active in his business right now (I jerked that information out of him).

[finboy]

Originally Posted by freudling 

Some guy from the States called me rambling on for 10 minutes about how my business name is "infringing" on his trademarked business name.

He has had a "coming soon" website for years, with nothing there. My name is the same as his (we both have the same last name, and we both use our last names in our business name). My name differs in that I have a "the" in the front of it. He said he will sue me if I don't change my name. I did get my company registered under the name Federally Incorporated in Canada 1 year ago. He said he has been using his name for 10 years.

Since I am in Canada, and he has not trademarked his name in Canada, is this an issue? Also, my name is trademarked under the Canadian Trademark and Patent Office at both the Federal and Provincial level. Also, we are doing two totally different businesses.

Lastly, he is a sole proprietor and is not really active in his business right now (I jerked that information out of him).

I don't think the his trademark crosses boundaries. But I'm not a lawyer.

[Dork.]

Sounds like you need a lawyer, just to be on the safe side. The guy probably can't even afford to sue you in Canada, though, since he'd have to pay real Canadian money to the court to file, not this cheap play American money.

Does he really have any sort of trademark or business name registered? You can do business as a sole proprietorship in some states without doing any of this. He may not know what he is talking about. One would think that if he did have a trademark registered, you could find it at the USPTO. Even if it was registered, though, if you don't do business in the US and he doesn't do business in Canadia, what harm is there?

United States Patent and Trademark Office Home Page .

[64stang06]

Surprise! An unemployed American suing to get money from someone! Ok, so maybe he isn't unemployed, but hey.

[Doofy]

Originally Posted by freudling 

Some guy from the States called me rambling on for 10 minutes about how my business name is "infringing" on his trademarked business name.

He has had a "coming soon" website for years, with nothing there. My name is the same as his (we both have the same last name, and we both use our last names in our business name). My name differs in that I have a "the" in the front of it. He said he will sue me if I don't change my name. I did get my company registered under the name Federally Incorporated in Canada 1 year ago. He said he has been using his name for 10 years.

Since I am in Canada, and he has not trademarked his name in Canada, is this an issue?

No, it's not an issue. Tell the guy to go f himself (literally - it'll wind him up something rotten and he'll then go on the warpath and spend loads of money trying to get back at you, which will be completely fruitless).

I'm bleedin' sick of ***hole Americans not knowing where their jurisdiction ends. Not the Americans here, of course - just the ***holes.

[turtle777]

Originally Posted by freudling 

Some guy from the States called me rambling on for 10 minutes about how my business name is "infringing" on his trademarked business name.

I wouldn't be too worried.

But for the fun of it, pretend to play along and request all kinds of ridiculous things from him, like copies of his trademarks etc. When he sends it, tell him you need it notarized. Then find another excuse or something else to keep him busy.

Make up bogus documents that you email him, but have him send back in signed originals via registered mail. Etc.

After a while, he'll get tired and agitated. Then tell him to fu<k off.

-t

[freudling]

turtle777:

I am rolling laughing, that is hilarious. Here is an email he just sent me:

Thanks for visiting with me today on the phone. I am familiar with international copyright law and I am confident we will prevail if I am forced to defend my trademark rights. Naming yourself “The Avon Company” does not distinguish you from “Avon Company” {JUST AN EXAMPLE} cosmetics. My company was launched in 1996 and I do business in Canada creating a likelihood of confusion. In fact, this issue was brought to my attention by an existing client who successfully confused my company with yours.

I recommend you use XXX Group Canada or XXX Group Services to distinguish your company from mine. I will not object to the continued use of your domain provided you run a disclaimer on the bottom of your home page linking your site to mine.

The precedent of case law on this front is overwhelmingly in my favor. Even the WWF – a multimillion dollar wrestling operation -- was forced to change their name to the WWE when their name infringed on the rights of the World Wildlife Fund, an environmental organization that preceded their existence by several years.

If companies could distinguish themselves with a noun marker the commercial world would become confusing. Want a burger? Visit The McDonalds. Want to start a television network? Use The NBC. The arguments you advanced today fly in the face of convention – more importantly they are not supported by legal precedent.

If I file suit next week I will seek maximum legal fees and relevant damages. I prefer not to force you to spend $25,000 or more on an issue that could be resolved amicably. If I get my attorney involved next week I will not compromise in the future. This represents your best – indeed your only – opportunity to resolve this outside or court. I am a friendly, reasonable guy but I will not allow anyone to take the name of my company after being in business more than a decade. That is not fair.

NAFTA confirmed the primacy of international intellectual property laws including trademark and copyright protections specifically between the United States, Canada, and Central America. The legal conventions surrounding the uniqueness of my company name apply equally to Canada and the United States. The fact that you operate in another country is of no consequence. In fact, formal registration of a trademark is not even required provide you pre-date the existence of other companies who seek to use the name and do business in the same geographical area. Since I have clients in Canada, including British Columbia, my trademark is broadly enforceable. Trademarks can “expire” if they are not actively used for an indefinite period of time, normally around five years. Despite my injury, I continued to operate my company continuously for the past 12 years.

Please do the right thing and change the name of your company. Feel free to contact me personally if you want to discuss this further. Let me reiterate that my offer to avoid litigation stands until 3pm Pacific time next Monday. After that time I will work with my attorney and hold you directly accountable for this violation of established international trademark law.

[brassplayersrock²]

" I am a friendly, reasonable guy" he sounds like an ashole to me. good luck with this freudling

[Big Mac]

Wait, your company is called Avon Company? Seriously? As in, "Avon calling" women's beauty products?

American trademarks can be extended internationally, and he sounds serious. You may want to check into the issue further with the advice of a lawyer.

[turtle777]

His email sounds like utter BS, but if I was in your shoes, I'd do some serious internet research. I'm sure this is not the first time that two businesses in different countries had the same name and battled over it.

Personally, I don't feel it's going to be a problem. There are countless companies in the US that share a common last name. E.g., you'd could have Martin Co., Martin LLC, Martin Ltd., Martin LLP. etc, all just distinguished by the different company structures.

Do you homework, the fu<k with him

-t

[analogue SPRINKLES]

I bet you he doesn't actually have a trademark.

Either way don't accept any more calls from him and IF he decides to take you to court from another country you can change it then.

But he is bluffing so tell him to stop calling you and only communicate through written registered letters or as far as the court is concerned he hasn't even ask you yet.

[Andrew Stephens]

NAFTA confirmed the primacy of international intellectual property laws

nice!

[analogika]

Originally Posted by Big Mac 

Wait, your company is called Avon Company? Seriously? As in, "Avon calling" women's beauty products?

No, it's called "XXX Group".

Read more carefully.

(Great name, btw - I think I've heard of them!)

[turtle777]

Originally Posted by analogika 

No, it's called "XXX Group".

Wait, his last name is Xxx ?







-t

[Chuckit]

"International copyright law"? This dunce doesn't even know what kind of law you're supposed to be breaking.

[Dork.]

Again, talk to an actual lawyer. But if you're registered in Canada (you didn't say you had a trademark, I assume that the name of your business is registered), and he isn't registered anywhere, then he probably can't do a damn thing, no matter how long he has been in business. If he values the name that much, he should have registered it himself.

And, finally, talk to an actual lawyer. If nothing else, you can get the lawyer to write a letter to tell him to f*ck off.

[peeb]

Get a lawyer. He may be a ****wit, and may be blowing smoke, but you need to be absolutely sure you're on the right side of this.

[analogika]

^

^^

It will cost you money, but you will be clear on exactly what you need to know to immediately blow off assholes like that one in the future, and possibly even show you additional ways to protect your business from actual vested interests others may show later on.

[freudling]

NO MY COMPANY IS NOT AVON. He is using it as an arbitrary name to illustrate whatever nebulous point he has.

[finboy]

For there to be confusion over a trademark, the businesses have to be similar or in the same industry (usually). Get a lawyer, or better yet, wait until HE gets a lawyer. What difference will it make to wait and FORCE HIM to do the legwork on this?

[Doofy]

Yeah, don't spend money on a lawyer. Mess around with him a bit (as per Turty's suggestion) then tell him to f off.

He hasn't got a case. *You* are the registered owner of the trading name in Canuckistan.

[freudling]

Man you Americans are on the ball. I have my company registered in Canada Federally and Provincially, but, after numerous phone calls to Ottawa, I found out that I actually have to file my "Doing Business As Name" in addition to filling for my corporation. The Government in Canada makes this whole process sound misleading, because they tell you to register your company federally because it "protects your business name". However, only your legal name registered is protected, but the DBA name is not trademarked during the process. Now, I found out, I must file with the trademark office in Canada for a "Word Mark" to get my DBA name registered. Ok, just filed that application, all done there.

Now, they told me that the American doesn't have much to stand on, that he has no jurisdiction over Canada, and he is not listed in Canada under any trademark for his name, and he is registered only in the US as a sole proprietorship, where he has been inactive for a few years.

To be safe, I just filed with the US trademark and patent office for my business (DBA name including my legal name in Canada), cost me $275 bucks under 1 classification. Interestingly, as you all suspected, he is not listed under his DBA name or variations of it in the trademark database. What else was interesting that I wish Canada had was that, I was able to enter my DBA name in the application, and apply for a mark for it. So that should about do it.

Now, my application is in the pipeline. Again, we are also in two totally different industries.

[freudling]

Nice, got my confirmation from the Patent and Trademark Office from the US. Of course, the Canadian confirmation takes 24 hours.

Here is a snippet from the US confirmation email:

"In approximately 4-5 months, your application will be assigned to an examining attorney; however, the critical date for determining registrability is your filing date, NOT the actual examination date. You will not receive any further USPTO communications until examination."

[Laminar]

Yay bureaucracy!

[analogue SPRINKLES]

Ha good for you. What a burn on this guy.

[turtle777]

Great, freudling. So now, go and play with him

-t

[brassplayersrock²]

was that to the OP or to the post before yours turtle?

[turtle777]

Originally Posted by brassplayersrock² 

was that to the OP or to the post before yours turtle?

Read twice

-t

[freudling]

turtle777:

I will! I can't wait. Not only do I require letter mail correspondence, but also that each letter is notarized, translated into French, with an English copy, and legalized at the closest Canadian Embassy in the US.

[turtle777]

Originally Posted by freudling 

turtle777:

I will! I can't wait. Not only do I require letter mail correspondence, but also that each letter is notarized, translated into French, with an English copy, and legalized at the closest Canadian Embassy in the US.

Make sure to bait him right.

Tell him that your lawyer told you to do that, and that the lawyer said that if he got those documents, you'd be convinced to change the name.

-t

[brassplayersrock²]

and then the guy finds these posts

[zerostar]

LOL right... I had something similar happen with a company I was doing work for.

[peeb]

Yep. Don't waste your time baiting him. Just tell him to **** off, or start billing him for your time.

[Mrjinglesusa]

One possible wrinkle: when the Trademark Examiner goes to search your trademark, he/she may find that this other person had been conducting a business under the same or similar name years prior to your application (filing) date, even though he never applied for a trademark. This could preclude you from getting a U.S. Trademark.

1207.03 Marks Previously Used in United States but Not Registered

As a basis for refusal, §2(d) refers not only to registered marks but also to “a mark or trade name previously used in the United States by another and not abandoned.” Refusal on the basis of an unregistered mark or trade name has, sometimes, been referred to as refusal on the basis of a “known mark.” This provision is not applied in ex parte examination because of the practical difficulties with which an examining attorney is faced in locating “previously used” marks, and determining whether anyone has rights in them and whether they are “not abandoned.”

However, since this will be an ex parte examination, it shouldn't be a problem for you.

[freudling]

Awesome information, thank you. Since this guy does not really have a legitimate business, I am sure most everyone has never heard of his business name. Also, I am in Canada, and the US thing is just an extra step. What matters the most to me is that my name is trade marked in Canada. He does not have much ground here.

[Atomic Rooster]

He must have googled his name and found you out. Tell him you'll sue him for harassment if he bugs you again.

[Mastrap]

Originally Posted by freudling 

turtle777:

I will! I can't wait. Not only do I require letter mail correspondence, but also that each letter is notarized, translated into French, with an English copy, and legalized at the closest Canadian Embassy in the US.

Excellent. Absolutely brilliant. Tell him that because Canada is a bilingual country you will need everything in French and English. All translations need to be notarized of course. All the while be as helpful as possible.

[freudling]

Mastrap:

lol

[BLAZE_MkIV]

I know its fun to plot and scheme but actually doing any of there things would look very bad to a judge if things actually came to a head. I would suggest politely refusing to speak to him on the matter further. Don't give him any more information. His apparent ignorance is your best card.

[moonmonkey]

Originally Posted by freudling 

turtle777:

In fact, this issue was brought to my attention by an existing client who successfully confused my company with yours.

I love this! He is exploring new realms of oxymoronics.

[Big Mac]

Originally Posted by BLAZE_MkIV 

I know its fun to plot and scheme but actually doing any of there things would look very bad to a judge if things actually came to a head. I would suggest politely refusing to speak to him on the matter further. Don't give him any more information. His apparent ignorance is your best card.

Good advice.

[turtle777]

Originally Posted by moonmonkey 

I love this! He is exploring new realms of oxymoronics.

Fixiniated.

-t

[freudling]

Ha!

[Buckaroo]

I'm not a lawyer, but I don't think this nut has a leg to stand on. I'm not sure but if my name was John Sony, I would be able to use John Sony as my business name, even here in the US. Sony could not do anything.

To top that off, unless he has a Canadian Trademark, he's so full of crap, his stench should be noticeable from where he's at all the way to your front door. Tell him to F*ck off.

[Buckaroo]

Originally Posted by freudling 

Awesome information, thank you. Since this guy does not really have a legitimate business, I am sure most everyone has never heard of his business name. Also, I am in Canada, and the US thing is just an extra step. What matters the most to me is that my name is trade marked in Canada. He does not have much ground here.

He's doesn't even have a business or product. Damn his stench is starting to cross the Atlantic now. You can't just up and trademark any name just for the heck of it. You have to have a product or business.

Damn it's getting stinky around here.

[Buckaroo]

Originally Posted by Mrjinglesusa 

One possible wrinkle: when the Trademark Examiner goes to search your trademark, he/she may find that this other person had been conducting a business under the same or similar name years prior to your application (filing) date, even though he never applied for a trademark. This could preclude you from getting a U.S. Trademark.



However, since this will be an ex parte examination, it shouldn't be a problem for you.

Please forgive me for speaking up on something I know very little about, but can't fruedling still obtain the US trademark with the condition that the other person using it previously can still use it in the state that he has been running his business. The other person just would not be allowed to expand into other territories?

So many laws have changed over the years and I haven't been keeping up with the new changes. The rules use to be very specific, now I have no idea. Congress totally FU the copyright laws, all because of Mickey Mouse.

[Cipher13]

Originally Posted by finboy 

For there to be confusion over a trademark, the businesses have to be similar or in the same industry (usually). Get a lawyer, or better yet, wait until HE gets a lawyer. What difference will it make to wait and FORCE HIM to do the legwork on this?

That's the crux of it really. If your industries/client targets are different, nothing else really matters (as far as my limited understanding goes).

Originally Posted by BLAZE_MkIV 

I know its fun to plot and scheme but actually doing any of there things would look very bad to a judge if things actually came to a head. I would suggest politely refusing to speak to him on the matter further. Don't give him any more information. His apparent ignorance is your best card.

Agreed. Don't go making up false requests (especially on behalf of an imaginary lawyer) for documentation that may be expensive for him to produce, or anything like that; if he finds your requests weren't legitimate, he could sue you for the cost of producing them (potentially).

Just tell him you'll have no further contact with him.

[Big Mac]

Originally Posted by Buckaroo 

Please forgive me for speaking up on something I know very little about, but can't fruedling still obtain the US trademark with the condition that the other person using it previously can still use it in the state that he has been running his business.

Federal trademarks apply to all the states. If one party has a valid trademark and finds that another party is infringing, it can go after the second party in federal court (and needs to in order to prevent the latches doctrine from possibly taking effect). Trademarks are published for opposition before being granted so that others can dispute them, but once they are granted trademarks are powerful tools in the hands of the corporations that hold them. IANAL.

[freudling]

Ok. So here are some updates. I ran a search on old cached pages, like from 8 years back. I can see he has had a website up with just one front page and no text. Over the years, his logo has changed, but his website has simply been a one page logo with no other information.

Now, I ran a search for his DBA name under his State's business search database and the name came up. While he registered for his domain name in 1998, his business was not registered until 2002, and, in 2004, he failed to renew the sole proprietorship registration so right now, he does not have a registered business at all. Moreover, his site has been under construction for years, and I found out that he is running a mediocre community publication online.

To reiterate, he does not have his business name trademarked in Canada or the US, and my has been filed in both countries. We are also in 2 different industries. To top it off, there are other big playing companies with very similar names that are using our last names, that have been in business longer than both of us.

Now, having said all this, I am fairly certain he is full of crap. Should I respond to his email or should I simply ignore him? What is the best course of action?

[Big Mac]

[I]gnore.