Fictitious Name Infringement?

Posted by . updated on 11/11/2009
Hello. ?

I am a custom software development consultant and have an LLC. ?I also registered a fictitious name (in the state of Ohio) ... Lets call the name "XYZ" ... to use while selling non-custom, mobile handheld software, in order to avoid marketing confusion with my custom business, which is 95+% of my business. ?I registered "XYZ" back in September, setup a website with that name, and have since gone on to sell over 150+ copies of my mobile handheld software in just a few months.

Recently, during a routine Google search for my names, I noticed a somewhat shady sounding natural foods company started selling a product online that they call "XYZ", an exact match to my fictitious name! ?And on their website they put "TM" next to it everywhere!

I have a lawyer that I use to review contracts, but the amount of money I make off of XYZ is not much (only about $5 profit per sale), so I don't want to have to spend alot of money on a lawyer (it would wipe out all my profits!). ?But I am concerned that they will damage my fictitious name's reputation. ?What are my options? ?Should I try to contact this so-called company to let them know that I have registered this name in Ohio and have been conducting business online using this name since September? ?This other company claims to have been around since 2000, but have only recently introduced this new product. ?it is totally unrelated to software and the name makes no sense whatsoever for their product.

I appreciate any advice you might be able to give.

[EDIT: I forgot to add... my fictitious is not a common word, it is a combination of two words merged into a single word, so I am really surprised it is being used by them]

-BrianP
Answers (4)
 
Lyza
I am not an attorney, but the same mark may be used to offer different products or services that won't cross paths in commerce.  

For example, Google the term DELTA and see how many different products and services come up.  I just did and counted 9 on the first page alone for airline services, faucets, taxonomy, software, health related services, dental services, arts & crafts, a college, and a storage solution.  All are distinctly different products and services yet they are offered under the same mark.  Their channels of trade are different.  If you are looking to book a plane flight, it is unlikely that you would linger too long on the Delta faucets site.

From what you've stated, it does not appear that the other party ("OP") is using the like mark to offer the same product(s).  If they are not using the mark to offer mobile hand-held software, you might be wasting your time and money trying to stop their use of the mark.

In any event, it is always wise to check with a qualified attorney before going forward with anything legal.  An attorney may add to or correct these statements.  Thanks.
 
 
JSonnabend
Lyza is correct in her analysis, at least in broad terms.  You don't "own" the name, so to speak, in any general sense -- you have rights to it only to the extent you use it as a trademark, and then only to prevent confusingly similar uses.    Where your goods are markedly different from the other party's goods, likelihood of confusion is quite small (or even zero).

Also, you should understand that registering a fictitious name/dba doesn't create trademark rights in and of itself.  Your use of the DBA as a mark is what creates those rights.  You might consider registering your TM federally to better protect yourself.

- Jeff
 
 
brianp
Thanks to both of you.  I think I understand it a little better now.  

I guess I was more concerned due to the fact that this company seems a little shady, but you're right, there is no chance that someone will think that I am associated with them in reality.

I don't really want to go through with registering the trademark since I'm trying to keep this on a shoestring budget right now, unless it takes off then I may consider registering it.

Thanks again.

-BrianP
 
 
JSonnabend
Registering a TM is relatively inexpensive.  $275 or $325 in filing fees if you do it yourself.  If you find a reasonably priced attorney, that shouldn't add too much either (I prep and file applications for a $245, for example).

- Jeff
 

Related Questions

Financial aspects of an infringement suit

Financial aspects of an infringement suit

In Someone is copying my Trademark, what do I do?    -  updated on 11/11/2009
Hi,

I am hoping for a generic, rather than specific answer regarding an infringement suit.

Unique trademark in use for years - did not register it.
Can absolutely prove confusion in the market place.
Infringing usage is exactly the same.


Infringing company has just had mark registered and period to oppose is past, but within 5 years so able to go for cancellation.  Filing was intent to use.

I won't go into details, but inf...
Trademark Questionable Case

Trademark Questionable Case

In Someone is copying my Trademark, what do I do?    -  updated on 11/11/2009
I have a friend who has owned a domain name for the past 15 years.  It's the name of a major city - also the same name is used by a national clothing company.  Through the years the clothing store has openly advertised on my friends website.  Recently they offered to buy the domain for far less than it's worth.

My friend didn't want to sell so now they are suing my friend for Trademark infringement.  Sounds like a case of taking what doesn't ...
should I be worried?

should I be worried?

In Someone is copying my Trademark, what do I do?    -  updated on 11/11/2009
I own a small t-shirt selling business who sells mainly on cafepress.com (online t-shirt website).  I have a registration for the trademark I use as my business name and clothing brand.  I'll say it's "Boomerang."  Recently I contacted a large manufacturer and distributorship of t-shirts in the hopes they could produce and develop my brand.  To my excitement, the owner of the manufacturing company said they loved the line, that they wanted to develop it...
Someone is using my trademarked company name.

Someone is using my trademarked company name.

In Someone is copying my Trademark, what do I do?    -  updated on 11/11/2009
Forgive my ignorance on verbiage, but I am still learning about this trademark stuff.

I have a company that I have trademark on the company name as well as on a the company acronym.   When we did all the name searches, nothing ever came up and I assumed that I was the only user.  Recently though, a website from a company in Florida just came online with the same name as my company.  From what I understand of trademarks, it is from first date of use, not date of ...
They just won

They just won't stop!

In Someone is copying my Trademark, what do I do?    -  updated on 11/11/2009
My company won a trademark battle a couple of years ago. This guy who was once a part of my company had created many websites (many years after leaving the company) with our company's name in the url and sells the exact same product as us, only with a different name. He claimed that he was selling our product, but had to change the name.

The guy filed for bankruptcy so we never were paid for our loss in money. That's fine. However, since then he still claims to be us, he uses the same...