Ask HN: Trademark Trouble

6 points by carterdea 14 years ago | 5 comments

tl;dr someone is claiming trademark infringement on a logo that they trademarked 4 years after we had had ours

This is my first post, I hope you guys can help. I am doing some marketing work for a small startup job board for medical device professionals (http://meddevicejobs.com). We had a logo and brand designed in 2004 by a design firm here in Phoenix, AZ.

Just recently, I noticed a different local design firm using a logo almost exactly like ours. This is the first I've heard of them, so I sent a sarcastic tweet from the company account, just "Cool logo." They tweeted back that it was cool and it's interesting that they've had it trademarked for "many years."

Next I get an email from them asking me to take our logo down because it infringes on their trademark. I looked up the trademark and they have the "M" thingy trademarked, but reversed. The trademark was for 2008. We had this logo in 2004. We didn't trademark it as we didn't think it was necessary and we put our money elsewhere.

What is the best thing to do?

Thanks

grellas 14 years ago |

Check with a good IP lawyer in your area. In general, with trademarks, first use in a given geographic area gives you superior rights over a subsequent mark that is federally registered but only later brought into use. With respect to the geography in which the first use takes precedence (this is called "common law trademark rights," the junior mark (i.e., the one used later in time though first registered) will normally wind up being the infringing mark concerning use in that area (thus, Amazon registered a powerful mark but wound up having to pay a small Minneapolis bookstore known as "Amazon Bookstore" to settle up with it for infringing its common law rights in the Minneapolis area - which rights were superior to Amazon's in that area owing to the small bookstore's having been the first to use the Amazon mark in that area, even though they never registered it).

These areas are complex and I can't advise on your specific case in a public forum. I note the above analysis only to suggest that you explore your rights further - you very likely hold the strong hand here.

carterdea 14 years ago | |

that's great news. Thanks a lot. I'll consult with my attorney.

onoj 14 years ago |

Do you have many customers and do they identify you through the logo? You may have accumulated some good will in that case. However, as you have not registered the mark, there is no legal history.

As it is too late to contest their registration, your options are limited. A legal professional will be able to give more detailed advice but from my unprofessional understanding you may be able to preserve your use of the mark by negotiation with the company or possibly using good will and prior use in court. I do not think you can stop them doing anything however.

carterdea 14 years ago | |

yes we have about 180,000 users signed up and we assume they identify us through the logo. It's a big ass logo.

We're in different fields, hopefully they'll just ignore it. It wouldn't be smart of them to sue. We're not hurting their brand at all.

michaelpinto 14 years ago |

1. Is this something you want to spend time and money on?

2. If the above answer is yes, is the other party in a position to not care about time and money?

3. If the above answer no, and if you can prove that your trademark is older then talk to a lawyer.

4. Find out the following from the lawyer: If your case is strong, and how much money and time might be require to defend the trademark. Then and only then would I go ahead. And even then I'd see if I could talk to the other party (if my lawyer told me I was in the right) and settle the case.

Another cost factor: Is going the legal route more expensive than a rebrand?

And also keep in mind that sometimes you can be talking to a lawyer who just wants to rack up billable hours. So try to find one that really knows about IP and comes recommended to you...