Tuesday, January 18, 2011

Do I have to stop using networking site name?

Dear Rich: I just started a private networking site/discussion forum that members can join and talk about the trade I'm in. I gave the site a name, and was recently contacted by someone in my state that said that they have that name trademarked in the state and I cannot use it. Upon looking up their info, I see that they trademarked the name under clothing and education. I also noted that while they trademarked the name in late 2009, they haven't really done much with it - they have a website with a logo and 'coming soon' message. They also have a Facebook page with 0 followers and no activity. My website does not sell anything, it is just a discussion forum that I've started as a hobby, so if I'm reading the law correctly, I must be actually selling a good or service to be infringing on his trademark rights, am I correct? Also, if the site gets so big that it becomes costly for me to keep up, I may decide to sell advertisements to local members just to cover the cost of the site. Could I do so without any issue? If so, should I trademark the same name under "Advertising" and "Personal Services" to protect myself, or is that necessary? It's difficult to say for sure whether you are "in commerce" but we think there's a good possibility that you are, regardless of whether you make money. You are likely offering "services" whether or not you accept compensation or charge for them.  Making money probably has more to do with the issue of damages. A lot of trademark owners don't bother chasing uses like yours because if they win, there are no profits to recover in damages. (Selling ads would of course generate income that might be recoverable.)
Are you headed for a lawsuit? That depends on whether the owner is puffing or really intends to do something about your use. In your favor: you're obviously in a different trademark class (although you may overlap if your forum caters to education and fashion); and the other party's state trademark registration does not offer as much legal ammunition as compared to a federal registration. (That's because some state registration agencies don't examine applications, they just basically rubber stamp the application without much checking.)
Should you federally register your mark? When you ask about whether you should register your trademark, we assume you're referring to federal registration. If you're considering that solely to block or defend against this trademark owner, it might be too early to take that action; many trademark owners only threaten a lawsuit, and it's possible that this will all blow over. But if you're considering registration  for long term purposes -- as an investment in your activity -- then yes, definitely pursue it. (We explain some of the basics, here.) As for your trademark class, we can't tell for sure but it's most likely in one of these: 35, 38 or 42. (BTW, trademark mavens have convincing arguments that 'trademark' is not a verb.)