Trademark infringement

[Michael_]

Today I noticed that a niche site I had been working on has a stupidly-similar name to a trademarked brand that, from what I can tell, is a very small local chain of stores.

Additionally, their name seems to be used by other small companies as well. I can't tell which one owns the trademark, but it's probably safe to assume that it's the small chain which looks to have the LLC as well.

Without outing myself, I'll try to give the best example I can. The small trademarked chain and the other companies are using, "PimpSlap." It also appears that their .com domain is being squatted on by some random guy and has been for a while. All the social media stuff appears to be split between the chain and the other companies with the same name.

I'm using "PimpSlapped.com" and have the accompanying .com facebook, twitter, etc accounts. Obviously we're all focused on the same type of niche, products, and information.


I'm curious what I should do going forward. I love the name and domain name, but I'm wondering if I should just go ahead and try to rename/rebrand the site.

Hate the thought of trying to build an online content brand out of it and then getting slapped down the road.

 

[CCarter]

I doubt you are going to get slapped with that much disorder and fragmentation already in the market place.​

 

[Michael_]

I doubt you are going to get slapped with that much disorder and fragmentation already in the market place.​

True, but couldn't the one that owns the 10 yr+ trademark just make everyone's life hell? Aren't we all one C&D away from having to rebrand?

 

[CCarter]

True, but couldn't the one that owns the 10 yr+ trademark just make everyone's life hell? Aren't we all one C&D away from having to rebrand?

Possibly, but are you in the same business as the trademark owner? For example Nissan Motor's doesn't own Nissan.com. A computer company called Nissan Computers does. The car company has been trying since 1994 to get that domain, they haven't been able to since it's not in the same niche.​

 

[Michael_]

Possibly, but are you in the same business as the trademark owner? For example Nissan Motor's doesn't own Nissan.com. A computer company called Nissan Computers does. The car company has been trying since 1994 to get that domain, they haven't been able to since it's not in the same niche.​

Yeah we're in the exact same niche. The trademark is small restaurant chain that serves "product," I'm online magazine that talks about "product."

 

[mx=headroom]

Obviously we're all focused on the same type of niche, products, and information.

Possibly, but are you in the same business as the trademark owner? For example Nissan Motor's doesn't own Nissan.com. A computer company called Nissan Computers does. The car company has been trying since 1994 to get that domain, they haven't been able to since it's not in the same niche.​

They are in the same niche.

What it really boils down to is whether you view this as a long term money maker or a quick hustle. If other people have been stomping on the mark with no recourse, you could probably make a quick buck. As with anything tomorrow is never guaranteed.

 

[Michael_]

Hmm, upon further research, the main trademark isn't owned by the small chain at all. In fact, the trademark seems to be owned by a company who tried to launch it as a product line under the name and, I guess, no longer makes it. I can't seem to find anything about the product on Google or where to buy it.

Makes me wonder if they are just going to let it expire since, I believe, they have to be using it commercially to maintain the rights to the trademark.

A §8 Declaration of Continued Use is a sworn statement, filed by the owner of a registration, that the mark is in use in commerce. Section 8 of the Trademark Act, 15 U.S.C. §1058. If the owner is claiming excusable nonuse of the mark, a §8 Declaration of Excusable Nonuse may be filed. The purpose of the §8 Declaration is to remove marks no longer in use from the register.

Hmm still not 100% sure where I stand at the moment, but that does give me a little hope.

 

[goldmercury]

I personally would rebrand. Take the best bits from the other brands.

 

[shawnhag]

the thing you gotta remember,is anyone can sue anyone for anything

even if you lose, a lot of times you'll spend at least xx,xxx to defend your case which is what a lot of people do in lieu of an acquisition or cease and desist

i think that is what "moz" is doing vs "doz" in that ridiculous case right now