Trademarked business titles

Smokin

Not a lawyer and of course the pros can correct me when I am wrong, but I think they'll want to know if its at all possible that your two businesses will sell the same products. For example, if they sold garden equipment and tools and you sold flowers, they could eventually sell flowers which is considered "bridging the gap" and courts will consider that a potential confusion in the market between your two businesses. I guess it also depends on how many "Grace's stores" there are in your location and if they are all own by the same person. I guess they can argue the "Grace's" earned a certain reputation.

If not, seems to me like they are just harassing, especially if Grace is your name.

Grace

They sell candles and spa products (including pajamas) and I sell handmade jewelry (I may also sell handmade handbags, totes and home decor... as in paintings/plaques and garlands.)  Their trademark on USPTO is for candles, if that makes any difference.  They have 3 shops (one in the US on the west coast) and NONE of them are in my area... I hadn't even heard of their store. 

As far as the name, it was my grandmother's name before she came to the United States.  Her parents wanted to "Americanize" her by changing her name when they came over and I wanted to honor her memory and where she came from by associating her name with my business.  So really it's a namesake issue that I'm fighting for.

Dave_Zan

Quote from: Grace on 09-27-08 at 11:18 pm

Grace

Their lawyer claims that the business is famous, yet absolutely no one I've talked to (I live just outside Chicago and have plenty of friends in the city) has heard of their shop... so much for fame.

And another thing about the "competition" issue... my shop is in an online market that I tell people who are unfamiliar with it that it's similar to Ebay but it's not auction.  My shop doesn't even have it's own domain name outside that specific online market.  I'm small time and they're not exactly big time if they've only got 3 stores in the world.  I even use a tag-line that states "handcrafted jewelry" and a possible future of handbags, totes and home decorations so my customers know what to expect.

I just can't wrap my mind around the idea that they are offended by "Grace's Shop" because they think "Grace's" would confuse their clientele.  I am somewhat offended for their clientele... it almost suggests that their customers aren't intelligent enough to know the difference between candles/spa products and handmade gemstone jewelry.

Lyza

I am not an attorney but you do need to get one who is intellectual property specialized.  An attorney will give you more standing against the other party and will know to what you should and should not agree.  You may be able to come to a co-existence or concurrent use agreement but the attorney will know how to talk to the OP.  There are a number of very good attorneys who could help that participate on this list, and remember that intellectual property is a federal practice so you DO NOT have to find a local lawyer.  Good luck.

JSonnab...

Grace, I'll just jump in the fray here to say this: the analysis of whether the two marks are in conflict is highly fact specific. 

First, you'll need to address the threshold issue of whether the two marks are confusingly similar, which means an analysis of the similarity of the marks and of the goods and/or services each is used with.  You'll also need to assess who was using what mark, when they were using it, and where. 

Finally, understand that advice like that which Dave Zan gave you is dangerous because it utterly fails to analyze substantively the relevant factors (and in the case of his statement of the law, it's plain wrong).

- Jeff

Dave_Zan

Quote from: JSonnabend on 09-29-08 at 08:43 am

MYK

You're also missing the possibility that they are planning to expand into jewelry, or would like to reserve the option to do so someday.

JSonnab...

Well, you can't "reserve the option" in any specific sense.  You can file an ITU application to gain priority of registration.  Additionally, there's the concept of "bridging the gap", which addresses natural areas of expansion for businesses.

@Dave: My only concern was that you stated flat-out "they can prevent you from using the term in commerce for candles only since that's what they're currently using it for", which sounds like a definitive statement (and is wrong).  I would hate for a poster to read that language and take it as gospel.

- Jeff

eutrade...

I am also interested to know what will happen at the end of this, as i have a similar problem..

Maybe the solution would be that Grace goes offshore, if the company physical location can make a difference regarding the TM infringement over the internet.

I am also here a learner...