What steps can I take to protect my trademarked business name from use in Canada?
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What steps can I take to protect my trademarked business name from use in Canada?
I currently have my business name trademarked in the US. I recently discovered that a woman in Canada has decided to use my business name but changing the spacing. For example, my business name is [REDACTED]. She uses [REDACTED]. Would it be worth: 1. Sending a notification letter asking her to consider changing her business name. She just opened in [REDACTED]. This would give her some time to add "Spa" to it or change it completely before having to go any further. 2. Pursue an International Trademark (which could take time) and then send her notice. I have had this business name for 15 years and therefore would like to protect the integrity and reputation of my business. Your guidance is appreciated.
Hello! My name is Dolan and thank you so much for contacting me! I just had a few quick questions for you: Are you finding that customers are getting confused by the two names at all? Are they flocking to her site instead of yours?
Hi Dolan, Thank you for your help! Here is my lengthy answer! Since she just launched her website and business within the last 6 months or so, I have yet to notice any confusion. This does not mean that the potential is not there in the future! I am attempting to choose the most potent and preventative measure. Since she is in Canada, there is no issue with competition but we are offering some similar services. My issue is maintaining and protecting my business name (identity) of 15 years. I cannot control how this individual conducts business and if there was any kind of liability issue, I want a very clear seperation from that. For example: I also have "[REDACTED]" trademarked. A woman in the UK (who is an unlicensed Acupuncturist) liked the name, decided to sell a similar product and just changed the spacing to "[REDACTED]". She pitched her product to the UK's version of Shark Tank and made some unfounded medical claims which sparked some outrage along with an increase in sales from winning the show. All of a sudden I started receiving messages and tags on social media because people were just entering "[REDACTED]" and not using the space. I began the process of completing the International Trademark Application for [REDACTED] but did not complete a section accurately, nor the funds or energy to proceed. I am attempting to prevent this from occurring again since my business is my "bread and butter" and essentially represents me and my practice. Thanks!
You're welcome! If I may, do you find that it is the name, slogan, or logo that you find to be the biggest differentiator between you and everyone else's use?
I would say the logo would be the biggest differentiation. I'm actually surprised that no one has copied the name thus far! There is a woman who has "[REDACTED]" as her business name which is a slogan I have used in social media. However, I am guessing she saw that I already had the name trademarked and acted accordingly. The action of changing spacing (Canada business owner) in my opinion, is indicative of the same method used by the woman in the UK. Essentially, the name is already taken but just change the spacing and have a different logo/color scheme.
Ok! I just need a little time to draft up a high-quality answer. I'll be with you as soon as possible. It won't be terribly long, ok?
So generally, if you are a complaining party in a trademark lawsuit, you have to consider the following: 1. The complaining party has to prove they have a valid, protectable trademark and that they own that trademark; 2. The complaining party must prove that a mark is similar, and it was used without the consent of the moving party in a manner that is likely to cause confusion among ordinary consumers as to the source, sponsorship, affiliation, or approval of the goods. The likelihood of confusion can occur at the time of the sale, when there is initial interest by a consumer, or even after the sale, if the confusion causes a consumer to no longer buy a service or product connected to the mark. The court considers things like the strength of the original mark, the similarity, the proximity of the products and marketing channels, whether there’s actual confusion, the defendant’s intent, the quality of respective products, and the sophistication of the customers. (Polaroid Corp. v. Polard Elecs. Corp. 287, F.2d. 492, 495 (2d Cir. 1961.) The usual relief is an injunction, a restraining order, destruction of the infringing marks, actual damages, lost profits, award of infringer’s profits, and even attorney’s fees. You mentioned here that you have [REDACTED] as the trademarked name, but the issue is going to be that we don't have any proof of customer confusion and this person is operating out your regular path of customers. Also, because these companies are working internationally, it would be hard to justify any kind of action against them. As such, I DO NOT RECOMMEND SENDING A DEMAND LETTER. They are often ignored and I don't feel a case would be sensible or justified against them.
So what does that mean? Getting an international trademark could help, but I would first determine the extent of international customers, whether you intend to move internationally in the long term, and consider the costs involved as well. In my experience, it is extremely common for companies to have similar names across the world and sometimes even in the same state. The most important thing is focusing on what does differentiate you, which is the log. This means that if you are going to invest any money, invest it where it counts, such as creating different iterations of your logo that are unique and slap it everywhere you can! Does that help clarify things? I want to make sure I didn’t leave anything out.
Absolutely excellent and extremely clear!!! Thank you so much!!! 1. Should I reach out to her personally as a fellow business owner and see if she would consider a change? Perhaps she could at least be on the lookout for people that reach out to her in confusion in which regard she could be polite enough to refer them appropriately? I mean, she is in Canada so it is highly unlikely but, you never know! 2. It seems as though the criteria would be in alignment with pursuing the case against using [REDACTED], since it is an identical product for similar use, identical name and there is evidence of the confusion that has already occurred. The issue here, is that she is highly funded by one of the "sharks" from the show. I do not have those deep pockets to pull from.
Hi *******! You are most welcome. 1. I think if you let her know your business exists and you can be cooperative with her and ask to refer them (as you suggested) is perfectly fine. Also, it reduces the chances of her thinking you are trying to rip HER off and you guys can stay in your respective lanes. 2. Money is always an issue when it comes to trademark litigation. What I usually tell small business owners is that you have to do things like add disclaimers to your site that you are not affiliated with that other accu seeds, create a short blog post that explains that your products and serves are wholly unrelated as well, and as painful as it sounds, consider adding something to the name like "The Original [REDACTED]," or "The World's Best: [REDACTED]." This may be cheaper than litigation.
Thank you! All wonderful suggestions. I have already posted a non-affiliation notice but will do so again and consider adding a slogan to differentiate. If litigation were to take place, is there a typical price range for this type of action? I realize it would depend on their response.
Sure! Because trademark litigation is specialized, and if you’re considering someone with international trademark expertise, it could be $50,000 at least. However, I think hiring a lawyer in town who could send a trademark cease and desist could be way cheaper, in addition to those suggestions to differentiate. Sometimes, hiring people to create SEO driven blog posts can help tamper down negative reviews in the interim. You can hire folks on Upwork for things like they. Much cheaper than litigation!
Thank you for your expert advice and suggestions! This was very, very helpful! If I have any further questions I will absolutely let you know.
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