Trademark question about product name and country

[teclance]

Hi guys

I am in need of a TM expert.

I sell a product which I can't mention the name at the moment that is using the same name of another person selling a similar product also with the same name.

He currently filed the name for trademark In March 2006.

Here is some info of it:

Standard Character claim: Yes

Current Status: Newly filed application, not yet assigned to an examining attorney.

Date of Status: 2006-03-06

Filing Date: 2006-03-01

Transformed into a National Application: No

Registration Date: (DATE NOT AVAILABLE)

Register: Principal

Law Office Assigned: (NOT AVAILABLE)


If you are the applicant or applicant's attorney and have questions about this file, please contact the Trademark Assistance Center at [email protected]

Current Location: 011 -Initial Review/Serialization Branch(Mailroom)

Date In Location: 2006-03-06


Now he is emailing me to stop using this name or he is going to proceed with legal actions.

I am in Canada and he is in the US. Is he in the right to stop me from using this name because we are in two different countries?

Also the claim hasn't been assigned yet so can he enforce the name while it is pending?

Any help is very much appreciated.

 

[Dave_Z]

It can't be helped that some people believe getting a trademark is some magic
amulet granting them absolute exclusive rights to a term.

If the domain name's registered way before the other party filed for a TM, you
have a chance. The person may still attempt to prove TM rights some other
way (i.e. common law), but that person must prove such first.

Your call, really, if you're willing to risk it.

 

[teclance]

So do you know if he is registering his TM is the US; can he go after me if I am in Canada?

This is a product not a domain name.

thanks

 

[Dave_Z]

Ah, now that's a different story. I'll let our "resident" attorney Dr. Berryhill give
an answer to that one. :D

 

[creativeidea]

I think you need my help;

There can be many conditions here:

1. If you are using the product/name before that person you are saved
2. However, if thats not the condition, then he may soon file an international filing of his trademark and then he may send a legal notice to you. You would be in trouble

 

[dagnabit]

It's all about timeliness.

If you have been using the alleged disputed domain name before him - you may have legal rights to it.

Just because someone files a trademark doesn't necessarily mean it is theirs.
Anyone who claims the right of Trademark (TM) [or ServiceMark (SM)] may use the TM symbol if they believe it is theirs, withour having to register it with the U.S. Patent Office. whether it's an idea, business or intellectual property.

In fact, if you control your domain, you may use the TM symbol now - if you truly believe it is yours.

 

[teclance]

thanks for the input guys.