Self Defense of a Trademark

Someone has started directly infringing on the trademark I have for my company name.

Your company is a game company. Is the infringer also a game company?

It is an indie dev. intent on releasing applications to the mobile stores (Windows 8 store, etc. Which I am already published on). No indication if the developer is intent on releasing video games specifically.

Regards,

Jesse

It is an indie dev. intent on releasing applications to the mobile stores (Windows 8 store, etc. Which I am already published on). No indication if the developer is intent on releasing video games specifically.

Then there is certainly room for confusion there, and you do need to consult an attorney.

It is an indie dev. intent on releasing applications to the mobile stores (Windows 8 store, etc. Which I am already published on). No indication if the developer is intent on releasing video games specifically.

Then there is certainly room for confusion there, and you do need to consult an attorney.

As the original post states, I do not have the funding to be throwing money into legal help right now. I am going to contact the individual myself, but I want to know if there are any obvious legal problems with doing so.

Unlike copyrights, your trademark needs to be registered. Do you have a legal registered business with a legal registered business name?

If not, he's not really infringing on anything since you don't yet own the name.

If you both came up with the name independently, it probably involves common words; and if it involves common words, and if you didn't register it, and since you are likely in different states or different areas, then you wouldn't have too much ground to stand on.

There can be dozens of Bob's Coffee Shops with different owners in different towns or states. Infact, if things aren't registered, or are registered improperly or just locally, there can be multiple Burger Kings.

Note that 'Google' when filing for their trademark, accidentally mispelt the word they were trying to go for (Googol). The misspelling actually gave them extra trademark protection, because it was an original name vs an existing word.

[I am not a lawyer - I just have a casual armchair interest in copyrights, trademarks, and patents]

Servant,

From what I know of trademark law from self-research, your statement is not factually correct, at least in the US. Trademarks do not need to be registered in the US in order to receive common law protection. It is the person who uses the trademark first (through product or service sale, for marketing, etc.) that is considered the owner. Registered at the State and Federal level provides "proof" of ownership; though that too can be contested if someone has held the mark for longer but not registered it.

I might be mistaken - again, I'm not a lawyer.

In the previous link I posted, a family ran a business named Burger King, in active use for several years before the actual Burger King franchise started in a different state and registered at the federal level. They only registered it at the State level, and when the other Burger King franchise spread into their state, the courts ruled that the Burger King franchise, having the federal trademark, had priority over the more local state trademark, and while the original users could continue to use the trademark, they could only do so within 20 mile radius of their original restaurant.

Now, you're operating on the internet... how the internet plays in to local vs state-wide vs nation-wide vs international, I'm not sure.

If your business is registered, then the name of your business has some protection. If you're running a business without actually being registered, and you didn't file a DBA (Doing Business As) like many US states require, I have zero idea what kind of protection the law affords you.

Wikipedia implies you have some protection, but not much:

The law considers a trademark to be a form of property. Proprietary rights in relation to a trademark may be established through actual use in the marketplace, or through registration of the mark with the trademarks office (or "trademarks registry") of a particular jurisdiction. In some jurisdictions, trademark rights can be established through either or both means.

Certain jurisdictions generally do not recognize trademarks rights arising through use. If trademark owners do not hold registrations for their marks in such jurisdictions, the extent to which they will be able to enforce their rights through trademark infringement proceedings will therefore be limited. In cases of dispute, this disparity of rights is often referred to as "first to file" as opposed to "first to use."

The second party would also likely have some rights, if neither party registered. And who knows? He might be able to provide evidence he was using the name before you on some internet forum when he was a kid.

If you really really want the name, register it ASAP (unfortunately costs money). If you are still iffy about the name, try to come up with one more unique and not a commonly used word and not a pair of common words (like Google is unique compared to the English word Googol).

I don't know of the legal ramifications of contacting the infringer yourself -- i.e. whether such action on your part would damage any future legal action...

If you really can't afford a lawyer though, then maybe you could email them, mentioning that your conversation is informal and off-the-record, and just let them know that your company exists...?

Unlike copyrights, your trademark needs to be registered.

Nope -- if you're trading something using a mark, it can be a trademark [edit] Though, this does depend on where you are in the world, and where you're doing business... [/edit]
You can explicitly put a (tm) next to it to explicitly state that you consider this to be one of your trademarks, but even that isn't mandatory.

At one company I worked for, the legal department instructed us to go and remove the (tm) symbols from all of the artworks (usually accompanying product names and logos), because they decided that by being more vague about what we consider to be trade-marks, we could change our mind later and get defensive over other non-marked things, like particular colour schemes...

Registered trade-marks are a different issue -- the ones with the (r) symbol. These are registered, which costs an absolute fortune, which is why you only usually see them on brands like Coke, etc...

As the original post states, I do not have the funding to be throwing money into legal help right now.

Yes, I saw that. You wouldn't be "throwing money" - you would be saving money. Think about how much money you stand to lose later on if you can't protect your trademark, or if the other guy takes you to court later.

Welcome to the world of business. You need an attorney.

Tom,

I understand what you are trying to get at, but it isn't helpful. I need to know if trying to talk with this individual on my own has immediate negative legal consequences. It does not help if I'm saving hypothetical dollars that I won't ever end up getting because I spent my budget on legal so I didn't have enough to finish my latest game.

I need to know if trying to talk with this individual on my own has immediate negative legal consequences.

A lawyer could tell you the best way to conduct that conversation.

Look, if it's cheaper to change your company name, it's fairly easy to do that without a lawyer.

I'm stepping out of this discussion now.

I need to know if trying to talk with this individual on my own has immediate negative legal consequences. It does not help if I'm saving hypothetical dollars that I won't ever end up getting because I spent my budget on legal so I didn't have enough to finish my latest game.

It is not an absolute. What you communicate with them CAN potentially have serious negative consequences for you. It also CAN get you the results you want.

It depends on exactly what you say and how you communicate it.

If you communicate it clearly about what you want, and what you write about is proper, and you show good faith, and do not make legal threats, and follow the law, then you will probably be fine.

If you do not communicate clearly about what you want them to do, or what you write about is even potentially improper, or if your words can be twisted to show you do not show good faith, or if you even hint about making legal threats, or if approach the borderlines of being afoul of any part of a very complex set of law, then you could create very negative legal consequences.

The steps are simple enough assuming you went through the proper channels to set up your company. Use a printed corporate letterhead if you have it. State that you are a business incorporated in <>, that you have been using your mark in business and have been registered with that state since <>. Then state that you just noticed that the other group is using your name. Politely tell them that you believe them to be infringing on your trademarks and that you want to discuss the matter with them.

A small list of things you shouldn't do include: During your first letter, do not offer any solutions, simply state that you want to talk. Do not threaten, or even hint about the possibility of threats. Do not mention anything about payment or repayment or any dollar or value amount. Do not use any language that conveys frustration or anger. Do not state it as a demand. Do not use "legalese" or attempt to sound like a lawyer. Do not impersonate a lawyer.

Unfortunately, as a non-lawyer it is very easy to step on a legal landmine. There is a long list of keywords and phrases that you need to avoid. Mess up and it could backfire, landing YOU as the defendant. Anything you write could be used against you in court, and it could be used against you on the Internet in a smear campaign against you or your business.

The trick is that you want something that requires action on their part, so a polite non-threatening letter may not get you the results you want. Or it might get you exactly the results you want.

Just know that if anything goes badly, the $150 or $200 you could have invested in a lawyer up front may grow to a $15000 or $20000 legal bill if it backfires. You may be saving a little money now, but it is a gamble most companies find foolish and unnecessarily risky.

As an indie I don't really want to be spending my funds on legal action.

I know it's hard, but try to think of legal fees in the same way you think of (for example) the $99 Apple developer fee, the cost of Visual Studio or a new PC monitor. Once you start taking money for what you create, you've really got yourself a business, and a business needs some legal advice now and then just as much as it needs a compiler or a printer.

Also, as an aside, it's probably best not to discuss specific details about this on a public forum (like this one). Frob's reply was spectacular and spot on. Anything you communicate to them or say publicly (as in in this forum!), could be used by an opposing attorney to help bolster their case, and it's easy to step on a legal landmine by mistake.

Frob,

Thanks for the advice - like Brian said, it was spectacular and spot on. I did end up speaking with a lawyer to get some general information. Contacting directly seems unlikely to have any legal fallout. Your suggestions about tone and content of the initial e-mail were very helpful - I appreciate it.