Church name accused of alleged TM infringement

[smblkc]

What is the name of your state (only U.S. law)? OH

I have a group of individuals that are starting a small church (only a handful of us). We had chosen a name, "Church of Universal Collaboration," for this church. We had just received an email from an individual who states to own a company called "Universal Collaboration Inc.," and he, of course was threatening us with a trademark infringement suit, as he states that our church name infringes upon the "good name" of his business, etc.. Apparently, he had located us via a web search, as we have put a site last month.

Based on what I have been able to find, there seems to be no conflict. Our names and business identities seem to be different enough to avoid confusion, and the way it was described to me, it would be no different than having "Apple Records" and "Apple Computers." Two companies that share a common name, but are not in conflict due to the fact they are separate enough in identity and what they do that neither company infringes upon the other.

We are debating on whether to take the safe and easy route by filing a different name with our state's SOS, or to say "screw it" and let him try to make a case (a matter of principle). We are curious to just get opinions on whether what we were informed about the differences seemed accurate and whether we'd have a leg to stand on if we were to decide to stand our ground (which is doubtful).

Thanks in advance!

 

[divgradcurl]

We are debating on whether to take the safe and easy route by filing a different name with our state's SOS, or to say "screw it" and let him try to make a case (a matter of principle). We are curious to just get opinions on whether what we were informed about the differences seemed accurate and whether we'd have a leg to stand on if we were to decide to stand our ground (which is doubtful).

What does the other guy sell or what services does he offer under his trademark?

 

[smblkc]

What does the other guy sell or what services does he offer under his trademark?

He hasn't stated. I asked him for more information on his company. However, when I removed the website, I also apparently removed the email that we were using (part of the hosting package). I tried to search the web search, and the only thing that I could find was a link directory site which listed a person with the same last name.

He did send me what he stated was his trademark registration number, but that was in the now lost email.

 

[Alex23]

I say screw him, start your church, and if he threatens you again, tell him to write to Jesus.

 

[davezan]

Is this it, smblkc?

Word Mark UNIVERSAL COLLABORATION
Goods and Services IC 045. US 100 101. G & S: SOCIAL NETWORKING WEBSITE FOR PERSONS BOUND BY A COMMON DESIRE TO MEET OTHER PEOPLE, WHETHER FOR DATING OR FRIENDSHIP. FIRST USE: 20030702. FIRST USE IN COMMERCE: 20030702
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 78518034
Filing Date November 16, 2004
Current Filing Basis 1A
Original Filing Basis 1A
Supplemental Register Date December 12, 2005
Registration Number 3216624
Registration Date March 6, 2007
Owner (REGISTRANT) Universal Collaboration, Inc. CORPORATION CALIFORNIA 725 Mount Rushmore Avenue Tracy CALIFORNIA 95377
Attorney of Record Wayne A. Lampert
Type of Mark SERVICE MARK
Register SUPPLEMENTAL
Live/Dead Indicator LIVE

You "seem" fine with your intent, though that won't stop the other party from taking legal
action anyway. Be ready to retain counsel if you wish to "fight" for the principle.

 

[smblkc]

That would appear to be it. Oddly enough, I haven't been able to find the website stated in that information.

I believe that just changing the name would be smarter for us. Realistically, fighting something like this might just be a little more expensive than we can afford.

Thank you for the info!!

 

[davezan]

Oddly enough, I haven't been able to find the website stated in that information.

Oh, just go to uspto.gov, click Trademarks at the left column, then search TM database. I
didn't link it here because the link to the exact mark in question expires.

 

[racer72]

Based on what I have been able to find, there seems to be no conflict. Our names and business identities seem to be different enough to avoid confusion, and the way it was described to me, it would be no different than having "Apple Records" and "Apple Computers." Two companies that share a common name, but are not in conflict due to the fact they are separate enough in identity and what they do that neither company infringes upon the other.

Very poor choice to use as an example. Apple Records sued Apple Computers for trademark infringment and it took many years before a settlement was reached.

http://en.wikipedia.org/wiki/Apple_Corps_v._Apple_Computer

 

[smblkc]

Very poor choice to use as an example. Apple Records sued Apple Computers for trademark infringment and it took many years before a settlement was reached.

Apple Corps v. Apple Computer - Wikipedia, the free encyclopedia

Actually, that example came verbatim from a paper found at the Harvard Law School on the matter of trademark infringement under the section about how different companies can share commonalities in their names.