How to defend my trademark?

[gworld]

Hi

I have a 2 words trademark that I applied for in 2003 and was granted by uspto in 2004. I even have a web site with this trademark as domain name that has been online since 2002. the trade mark is in field of publication both electronic and print.

Now I have noticed through Google search that a big magazine is using my trademark like a catch pharase next to their magazine name. How should I handle the situation, I am not looking for a fight, so my first instinct was to send them a letter and ask them to stop this but they are a big corporation and what happens if they do not take a letter from a private person seriously.

Is it better to hire a lawyer from beginning and ask them to handle it? what will it cost? If it is going to go through courts, should I sue them for damages at once and is there any lawyer who takes this kind of cases based on percentage of award?

[jazzpetals]

If they are commonly used words, I'm not sure there is much you can do.

Originally Posted by gworld

Hi

I have a 2 words trademark that I applied for in 2003 and was granted by uspto in 2004. I even have a web site with this trademark as domain name that has been online since 2002. the trade mark is in field of publication both electronic and print.

Now I have noticed through Google search that a big magazine is using my trademark like a catch pharase next to their magazine name. How should I handle the situation, I am not looking for a fight, so my first instinct was to send them a letter and ask them to stop this but they are a big corporation and what happens if they do not take a letter from a private person seriously.

Is it better to hire a lawyer from beginning and ask them to handle it? what will it cost? If it is going to go through courts, should I sue them for damages at once and is there any lawyer who takes this kind of cases based on percentage of award?

[namestrands]

What you need to be careful is that if this company, becomes better know for that mark than you, then you could in fact loose your trademark if your trademark is listed under the same services as the Magazine.

My opinions of lawyers are that of bottom dwelling scum feeders, but unless you want to quickly get a degree in trademark law, I would have to say you would really need to bite the bullet on this and contact a trademark lawyer.

Since you offer no other information with regards to the domain, the trademark and the alleged infringer, it would be difficult for anyone here to advise..

Best thing is to keep yourself calm and dont go sending demanding C&D emails, take your time and approach this with a clear mind.

Best of luck

[gworld]

Originally Posted by jazzpetals

If they are commonly used words, I'm not sure there is much you can do.

I don't get this, if this is true what is the point of having trademark, all words are common to an extent, otherwise it won't be a word.

namestrands, thanks for the help. Do you know what is usually the cost for such a service from trdemark lawyer. The company that is using my trademark is an American magazine but the phrase is used in the their German Edition (don't ask me why, they use English phrase in Germany?).
I found this through search in Google, Can I just simply contact Google and ask them to remove it from their search?

[Dave Zan]

Originally Posted by gworld

I don't get this, if this is true what is the point of having trademark, all words are common to an extent, otherwise it won't be a word.

People register for trademarks to help strengthen their brand, not give them
absolute exclusive use of a word or phrase no matter how else it's being used.
If you check the USPTO for "caterpillar", you'll find at least 12 different uses
for it in 12 different classes.

namestrands, thanks for the help. Do you know what is usually the cost for such a service from trdemark lawyer.

About...what? $200-$400 per hour?

And that's being conservative. :-D

I found this through search in Google, Can I just simply contact Google and ask them to remove it from their search?

Hmmm...I guess it won't hurt to ask. Give it a try, then decide after Google
responds...if they'll reply back, that is...

[gworld]

Originally Posted by davezan1

People register for trademarks to help strengthen their brand, not give them
absolute exclusive use of a word or phrase no matter how else it's being used.
If you check the USPTO for "caterpillar", you'll find at least 12 different uses
for it in 12 different classes.

I understand that, the problem is that these people are using it in the same class as I have the trademark in, namely publication.

[Acro]

Originally Posted by gworld

I understand that, the problem is that these people are using it in the same class as I have the trademark in, namely publication.

You answered your own question.

Defending your mark from dilution is the best move. Consult an IP attorney and define a strategy - most likely the first step would be to send them a cease and desist letter.

[namestrands]

Originally Posted by RADiSTAR

You answered your own question.

Defending your mark from dilution is the best move. Consult an IP attorney and define a strategy - most likely the first step would be to send them a cease and desist letter.

The Rt. Hon Radistar is right in this case, but you have to consider that having a US tradmark does not automatically give you rights in every country, in America trademarks are issued state by state, you would have to register with the Office for Harmonization in the Internal Market, and have it registered in the country where the magazine is published. As this would be a matter for the courts and not a UDRP you have a much better platform and you can argue your case on a level playing field.

If you want to PM me over the site in question and your site, I will review it and give you some options as to the course of action you can take..