What do I do if I received a letter from a paralegal stating that I should give up my domain and business name or they will sue? 7 Answers as of March 11, 2013

I registered a business since 2007 in Canada. As a protocol, we have to do a business name search before obtaining the business name. The name was available and I went ahead and registered my name. In 2011, I noticed another company with the exact same name was coming up in Google search but it was an American company. They had the name Trademarked in the USA. I was not happy but chose to ignore it and continue conducting my business as usual.

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Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
It appears that you only registered your business name (IE as a sole proprietorship, DBA etc) so it would be your trade name. It is not clear if you were using your business name as a trademark. For example, did you use the ? behind your business name ever? If you were indeed using your business name as a trademark and you were doing this in the USA before the other company registered their trademark, then you are the senior mark and you may be able to have their mark cancelled - provided that you can allege that there is consumer confusion and that they are in a similar classification. Look at the USPTO website regarding "cancellation proceedings."
Answer Applies to: Oregon
Replied: 3/11/2013
Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
You should check at USPTO.gov to determine when they filed for their mark in the US. If they filed after yours, then send them a reply that you have a prior date of filing in Canada. If they have an earlier date of use then tell them that you have a registered mark in Canada. You might not want to give up your domain without contacting an IP attorney in Canada to determine the filing dates. It also seems interesting that the letter was from a paralegal instead of an attorney or an officer of the company. You might also want to ignore the letter, especially if it was not sent certified and requiring a signature to prove receipt.
Answer Applies to: California
Replied: 3/11/2013
Ochoa and Associates
Ochoa and Associates | Susan Ochoa Spiering
Is your business in the US or in Canada? It sounds like there is more here to consider and ask. You're best bet is to see an attorney who handles trademark matters to resolve this.
Answer Applies to: Texas
Replied: 3/11/2013
Eminent IP, P.C.
Eminent IP, P.C. | Paul C. Oestreich
Your factual scenario raises a number of questions to properly advise you. First, are you in fact residing in Canada and are you doing business in the U.S.? If you are in Canada and don't do business in the U.S., then Canadian Trademark law applies, not U.S. Trademark law. Under that scenario, the U.S. company may not have jurisdiction over you and what you do in Canada, unless they have Canadian trademark rights and do business in Canada too. Second, how long has the U.S. company been using their mark? If their mark predates your use (presumably since 2007), then they may have the senior user rights in the U.S. If, on the other hand, you are the senior user, the U.S. company is in a weaker position. Third, what goods or services are you associating with the the mark in question and similarly what goods and services are the U.S. company associating with their respective mark? If the goods and services are distinguishable, you may have another reason to argue that there is no infringement because of the distinctiveness of the goods and services in question. This last question would be included in the typical trademark infringement analysis which, depending on the jurisdiction, and therefore controlling law, falls into a non-exhaustive list of factors that must be weighed to determine whether there is a likelihood of confusion and therefore, infringement. Fourth, you indicate that your name is registered as of 2011? Is that a business name registration? Or is it a Canadian Trademark registration? Or is it a U.S. trademark registration? There is a different legal and factual analysis relating to the domain name issue that is outlined in the Anti cyber squatting Consumer Protection Act, which I will not elaborate on here. As you can see, there are a lot of legal issues raised in your particular fact scenario. Furthermore, that analysis is a very factually driven and would require much more information from you to provide you proper legal guidance. So, as always, you would be well-advised to seek legal counsel to properly determine your best response strategy and to determine what your legal rights and obligations are in this particular matter.
Answer Applies to: Utah
Replied: 3/11/2013
Sebby Law Office
Sebby Law Office | Jayne Sebby
As long as you only do business in Canada and the U.S. firm only does business in the U.S., there shouldn't be a problem. This could just be someone trying to scare you into signing over valuable intellectual property, especially since the letter is only signed by a paralegal. However, you should talk to an experienced IP attorney to see if the other company has any valid grounds for a suit against you.
Answer Applies to: Nebraska
Replied: 3/11/2013
    Banner & Witcoff, Ltd. | Ernie Linek
    Unfortunately, if they sue you - it will cost you money to defend your business and domain names. You were first according to the facts provided - and that gives you the right to keep the business and domain names. Moreover, if you had business activity in the United States before them - you may have the ability to invalidate their trademark. Facts will determine who should prevail - so you should consult a trademark/domain lawyer.
    Answer Applies to: Massachusetts
    Replied: 3/11/2013
    Barton Barton & Plotkin
    Barton Barton & Plotkin | Maurice Ross
    I would need more information before advising you. You made a huge mistake because you did not use legal counsel to assist you in selecting your business name. Registration of a business name does not give you the right to use it as trademark. Trademark rights arise from use in commerce. If the US company is the first to use the trademark in commerce and if consumers might be confused between the two companies, the US company can properly insist that you stop using the name. You need urgently to retain legal counsel in the US to defend you and negotiate a settlement. Otherwise you will face litigation.
    Answer Applies to: New York
    Replied: 3/11/2013
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