April 15, 2019

Someone is using my company's name - should I do something about it?

Early this year, I rebranded my company to eventOne. But I had purchased the domain and had the name idea around August last year. I have now found that someone is also using the name "EventOne App" for a similar but not quite the same product. Based on WHOIS, they bought the domain in September so I think I had the name first. Should I do anything about it? Or should I let it slide?

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    I'm not a lawyer, but I don't think you have any legal leverage unless you have the trademark. In fact, I think if the other company decided to beat you to the trademark, they could send you a cease and desist letter and cause a lot of problems for you.

    Sending a cease and desist without a trademark is in my opinion a bad idea. If I were the other company, I would immediately look you up on the https://www.uspto.gov website, see that you don't have a trademark, and then I would start my own trademark filing to beat you to the punch.

    If you're in for the long-haul with your company, I would definitely get the trademark. My lawyer cost me $750 for my trademark work, and I've been told by others that it's possible to do it yourself if you're short on cash, though that doesn't sound like fun to me.

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      +1 for geting a TM

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        Would a TM force them to give up the domain as well?

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          Again, caveat that I'm not a lawyer and this is a complicated issue.

          The answer is possibly yes, and it has happened before, but it depends on a lot of things. First, it depends on whether the other company is truly infringing on your TM. Fair use can be an exception, and also if the other company is in a different product category, they are allowed to use the domain. It's a question of how similar their product is and whether it will cause "brand confusion" with customers.

          Second, if you do obtain the trademark, and it's clear that their use of the domain name is infringing, then a few things could happen. After you send them a cease and desist letter (which you should do with a lawyer... these letters have a lot more clout when sent by a lawyer rather than by you personally) they may realize they're legally in the wrong, and the most civil way to resolve this is for you to negotiate a purchase of the domain for a reasonable amount and give them a little time to find a new domain name. Trying to force them to give up their domain for no money is possible, but probably requires you taking them to court and litigate, and you probably don't want to do that. But you may have to if they refuse to give up the domain name entirely.

          Last piece of advice is that you do get the trademark, you should absolutely send a cease and desist letter. Once you have a trademark, you should take reasonable efforts to defend it. If you allow someone to infringe on your trademark for years, and then later try to defend it, it may weaken your case. Big companies use trademark monitoring services or law firms to monitor their trademark, but I personally think that is overkill for small businesses - just defend your trademark when you find someone infringing.

          I have found that freelance lawyers on upcounsel can be quite good, and far less expensive than hiring a firm.

          https://www.upcounsel.com/domain-name-trademark-infringement

          https://www.nolo.com/legal-encyclopedia/avoid-trademark-infringement-domain-name-29032.html

          https://www.nolo.com/legal-encyclopedia/enforcing-trademark-rights-29902.html

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            @stevenkkim Thanks for the advice!

            Based on WHOIS on the domain, the company appears to be in India. Does a U.S. trademark have any sway in India?

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              Definitely beyond my knowledge, but if I were to guess, probably not.

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            Oh, and after you get a TM, obviously if you don't want to actually use the competitor's domain and you just want them to stop using it, you can just send them a cease and desist letter and not try to purchase/obtain it.

            In fact, even if you do want to obtain the domain, it's better not to let them know it, because they may be emboldened to negotiate harder. Instead, just tell them they have to stop using it. They may either 1) just abandon the domain, or 2) they will ask you to buy it since it's now useless to them, and this puts you in a better negotiating position vs. you asking them to sell.

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          you can sue them in case they will be using your TM for a product similar to yours

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            Unless they are in a different country, I assume.

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    Mmm this can be quite tricky, perhaps a dialogue might help to see if anyone will be willing to change their name or at least come to the acknowledge you both share the same brand name.

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      I've considered doing that as well. Just not sure how much that would really help. I guess I could start there, though.

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    Not sure you can actually do anything about it, though if you are concerned perhaps looking into trademarking your name, or check to see if there are any trademarks with it.

    It may be worth seeking legal advice.

    I do know a friend who started a podcast with a name, then someone else started a website with the same name and Trademarked the name, then got their legal team to enforce her to change the name. She was obviously stressed out about the whole thing, it's not fun.

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      Some things I've thought about doing are sending a cease and desist (which doesn't have much meaning without a trademark) or just nicely asking them to stop (which probably would be ignored). Actually trademarking the name might give me a lot more leverage, but that's also costly.

      I've checked and there are no existing trademarks with the name I'm using in the same category. There was one dead one though.