Forum Moderators: not2easy
For years my website had no serious competition because of the specialized niche that it covers combined with the intense work that went into development. But recently a large organization dumped a ton of money into essentially reverse engineering my site. So after all these years, we finally have a competitor. That's OK.
Now I have nothing against reverse engineering--that's what software design is all about! But the problem is that my competitor has not only reversed engineered "XYZ" but he chose to name it the exact same thing. This feature is very popular and people go straight to Google to find it it, because they hear the name via word of mouth. And of course my site comes up first because for years we have had the one-and-only XYZ on the net.
But now these guys have decided to name their near-identical feature after mine. Give it some time, they will surely capture traffic searching for my feature. We've spent good money advertising the name XYZ to get it well known, not just web advertising but magazines as well. And they are just riding our coattails by intentionally creating confusion in the minds of the consumer.
My questions are:
1. What does it take to get a trademark on XYZ? Do I have to hire an attorney or is there some simple 1-2-3 trademark kit that I can use?
2. How much money am I looking at here?
3. Does it matter that I have been selling this service under the name XYZ for years? (This is a fact that can be easily demonstrated via the "wayback machine" or the testimony of a bazillion members of my site.)
4. If my competitor races me to the trademark office and gets a trademark on the name first, could I actually be forced to change the name, even though they obviously stole it from us? Likewise, if I get the trademark first, can I then tell them with confidence that they must cease and desist?
Thanks in advance.
[edited by: Bolotomus at 12:46 am (utc) on Feb. 21, 2008]
Meanwhile, have you even visited the govt. site for the office that registers trademarks? You should: [uspto.gov...]
Note that there's even a 1-800 number you can call for help. Don't sit on your hands! I am not a lawyer, but yes, to answer one of your questions, if you properly and carefully trademark your feature XYZ before your competition, you can take action. I just hope they didn't get a jump on you.
DISCLAIMER: I AM NOT A LAWYER! What I talked about above was not sound legal advice, just my limited understanding of trademark law.
Not sure which country you are in, but over here, making a beer with onions and calling it Onion Beer isn't going to be easily defended as a typed trademark (although the style/graphical presentation of it can be); making a beer with onions and calling it Brewnion is a much stronger position.
Then, you have the danger that XYZ has become a commonly used term for something which does whatever your product does. Think Hoover, Biro, etc. Not defending your trademark, registered or unregistered, can mean you lose the rights to it. You can't let the industry start using XYZ as a general technical term or as part of their jargon and then suddenly decide it's your protected trademark. See also the way in which Google has been fighting against the misuse of its trademark to generically mean 'search' rather than specifically to mean 'search using Google'.
The DMCA might help you; you can try reading up on it. If you believe you have an (unregistered) trademark, you might be able to have the web-host of the competitor (or their data center) remove their site pending removal or renaming of the copied product.
In general however I really think you should talk to a lawyer, with a view to getting this competing service shut down, some damages awarded to yourself, and hopefully a court order that they redirect their existing traffic (which was obtained by deception and trading on your trademark) to your service for a year.
Honestly, if I simply asked them to pick another name, there's an excellent chance that they would just do it because they realize it's the right thing to do.
The problem is that I'm not SURE that they would behave this way. My fear is that they will play the "race to you to the trademark office game" with me, and I might lose that race. Even then I could probably claim the rightful ownership, but the fight would suddenly become 100 times more complicated. So now I feel like I'm forced to go through the legally respected channels before even mentioning it to them.
Which isn't so bad. I haven't worked with an attorney in years and they are famous for overcharging. However I'll be the first to admit, when you need an attorney, you really need an attorney.
Is XYZ just a string of descriptive words ("fast widget finder", "widget optimiser", etc.) which are a logical way to describe the product, or is it something novel ("widgfast", "opti widgi")?
Oh, good question. Honestly it's not a very creative name -- it would be closer to "Widget Optimizer" than "OptiWidgi".
I would however say it's at least as distinctive as "Webmaster World". (Which incidentally, according to the footer of this page, is a (R) Registered Trademark of WebmasterWorld Inc.)
Prior art always wins.
This is absolutely correct, but you much have some visual proof of usage. There is a carefully detailed portion of the application process that involves "first usage". Go to the USPTO website NOW. (link in previous post.) File the trademark registration, get it rolling. You can do it all directly on the USPTO website, and if you run into a section you can't accurately answer, you can save the application and complete it later.
Securing a trademark takes at the very minimum 6-9 months. Get it rolling.
...if I simply asked them to pick another name, there's an excellent chance that they would just do it....
If they've gone to this trouble to duplicate your site, using exact same names, I find this unlikely. All the more reason to get the legal documentation of a trademark registration behind you.
