Atlanta, GA asked in Trademark for Georgia

Q: If someone is using my company name as a website can I do anything?

Company name is trademarked.

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2 Lawyer Answers
Timothy John Billick
Timothy John Billick
PREMIUM
Answered
  • Trademarks Lawyer
  • Seattle, WA

A: Yes. You have options.

Assuming you have a solid case of infringement, you could perhaps file a trademark lawsuit in state court, federal court, or start resolution through whomever is hosting the website (likely ICANN).

Please talk to an experienced IP attorney to discuss these options more fully.

Bernard Samuel Klosowski
Bernard Samuel Klosowski
Answered
  • Trademarks Lawyer
  • Greenville, SC

A: Yes, possibly. If there's likelihood of confusion (LoC); i.e., trademark infringement, then the mark owner has various options to stop the infringement. Options might range from a demand letter to a Domain Dispute action to a federal lawsuit.

But there are a number of factors that have to be considered besides the company name/trademark itself to determine if there's LoC/infringement and before taking any action.

Trademark infringement occurs where an infringer is using the same or substantially similar mark as that of the mark owner in a way that it is likely to confuse consumers; i.e., where the public thinks that different entities are the same or affiliated due to the use of the same mark. To reach a LoC/infringement conclusion, various factors and facts must be weighed. For example, is the mark federally registered or is it a "common law" (unregistered) trademark? If common law, is the infringing use occurring in the same geographic area as the company's business? Is the word that makes up the mark an ordinary word being used in arbitrary fashion, or is it a fanciful word? Has the registered mark become incontestable or famous? What are the underlying goods/services of the mark vs. what is being promoted (in this case) on the website? Is the website address using the mark as part of the URL or in the content of the site or both? If the mark is in the website URL, is it being used alone or with other words? Is the website using the word as a trademark or just in the ordinary sense? Was the website using the word before the company and/or before the company's registration or vice versa? Do the companies share the same consumers? Are the channels of trade the same? These and other factors and facts must be considered to make an informed decision about LoC and whether to confront the infringer.

Assuming the analysis points to LoC, the mark owner might then exercise one or more of the options mentioned above. But caution is urged -- demand letters should not be sent nor legal action taken without the advice of counsel. For instance, sending a cease & desist letter across state lines without a proper investigation could ironically result in severe legal consequences for the mark owner if it turns out that the website owner has superior rights in the mark or isn't actually using the word as a trademark, etc.

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