What should I do if another company used the same name of my product? 10 Answers as of August 28, 2013

I created a product and gave it a name in January 2012 to find out that a magazine company used the same exact name for a series of articles related to the same subject. Their first article began in July 2012. I'm wondering what kind of legal stance I have to proceed selling my product.

Ask a Local Attorney. 100% Anonymous. Free Answers.

Free Case Evaluation by a Local Lawyer: Click here
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
You can sue for trademark infringement and some form of unfair competition practices.
Answer Applies to: California
Replied: 8/28/2013
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
Did either of you file for a trademark? Federally or w/i the state? Did either of you use the mark beside your use of the word? Is the word even trademark able? Do anyone else already have the domain name or the trademark?
Answer Applies to: Oregon
Replied: 8/28/2013
Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
If you did not file for a trademark on the name then your options are limited to Trade Dress laws. If you filed and received a registered trademark for the product then you can send them a cease and desist letter to stop further use of the name. You may be entitled to damages if you can show that you have been harmed for their use of the name. You will need to account for the monetary damages.
Answer Applies to: California
Replied: 8/28/2013
Microtechnology Law & Analysis | Daniel Flamm
Your question is hard to follow. You mention a name was given to a product, but that the product was never sold under that name. If the product/'name were never used in commerce, and the name was never registered with the US Patent and Trademark office, you have no rights to that name. There would be no copyright for a name, without more. Then you say a magazine had an article mentioned the name in some related way. Even if you had a trademark, merely mentioning the trademarked name in an article should not infringe that mark.
Answer Applies to: California
Replied: 8/28/2013
Webb IP Law Group
Webb IP Law Group | Jason P Webb
Trademark rights depend on use in commerce and the extent of that use. Giving something a name without using it in commerce does not establish rights. Filing a federal trademark application that is granted will give a large amount of rights and makes it difficult and expensive for people to challenge those rights. I recommend that you speak with an attorney about your specifics. Your attorney will have a few questions for your and can give you some good recommendations.
Answer Applies to: Utah
Replied: 8/20/2013
    Carrier, Blackman & Associates | William D Blackman
    Intellectual property law offices carrier, balckman & associates, P.C.
    Answer Applies to: Michigan
    Replied: 8/20/2013
    Sebby Law Office
    Sebby Law Office | Jayne Sebby
    It is possible, given the lead time for magazines, that you each came up with the name at the same time. You can continue to sell your product with the name you have chosen.
    Answer Applies to: Nebraska
    Replied: 8/28/2013
    DANIEL NESBITT
    DANIEL NESBITT | Hasse & Nesbitt
    The details are essential. You'll need to engage an attorney.
    Answer Applies to: Ohio
    Replied: 8/28/2013
    Gerald R. Black, Esq.
    Gerald R. Black, Esq. | Gerald R. Black
    You are in the area of Trademark Law. In order to use a name as a trademark, there is a requirement that you serve notice that the mark is your trademark for your product and place a "TM" after the mark. If you are selling your product across state lines, you are engaged in "interstate commerce" and can register your mark with the U.S. Trademark Office. Once the mark has been registered, you replace the "TM" with a. If you have used the "TM" but not yet registered the mark with the U.S. Trademark Office, I recommend that you apply for a registration, indicating that your first use of the mark was January 2012. I hope that this helps and good luck!
    Answer Applies to: Michigan
    Replied: 8/28/2013
    Banner & Witcoff, Ltd. | Ernie Linek
    Trademark rights are acquired in the United States by use of the mark (product "brand" name) in commerce. If you are first - you can continue to sell your product using the name you gave it. If the magazine was first - they can ask you to stop. Also - strength of the mark will also be important - it the mark an arbitrary name? Is it a suggestive name? Is it a descriptive name? Each of these is entitled to various levels of protection under the trademark laws of the US.
    Answer Applies to: Massachusetts
    Replied: 8/28/2013
Click to View More Answers: