Trademark question

[Bounder]

What is the name of your state?I thought it best to ask here first be for heading off to an attorney...

I sell toy model kits and have a "logo" I use on the images of the models being sold.

The models are for war games so the logo is of that venue, it is a black and white German eagle from WWII that stands on a wreath with an inscription around the inside and a three barred cross in the center of the wreath.

I was just contacted by a gentleman who states his logo is the same, his is a German eagle of similar design but not the same and has a Nuke sign in the center of the wreath... you know the three triangles with a dot in the center.

This is what he sent:

"Dear Sir/sirs
I have recently noticed your company has changed its Company logo to a single headed Eagle logo and it is very similar in design to our company logo.
I feel a duty to make you aware that our 28mm scale company (edited out company name), (c) is already using this style logo for our products and has trademarked the design.

Our registration certificate number is ****** Registered on the 13th Sept 2004

I have attached a copy of our logo to this e-mail, for you to compare.

Sorry for any inconvenience this may cause you having to change your design, but it may be in your long term interests to change it now, so as not to confuse your customers with our 28mm products?

Please feel free to contact us if you have any questions ect, again sorry for any inconvenience this may cause you."

you can see the logos by these links.....

http://img.photobucket.com/albums/v468/Bounder1966/Ourlogo.jpg

http://img.photobucket.com/albums/v468/Bounder1966/Othercompanylogo.gif

Do you think the marks are so similar as to cause confusion? I don't think so but whats your thoughts? sure they are similar, but thats because they are both based on a historic emblem, but the look of each is different and the center of the wreaths are not the same at all....I searched the copyright and trademarks here in the US and in the UK (his location) with the registration number he provided but came up with nothing...

I have asked him for more information, who filed, what was the name it was filed under, where it was filed etc. To my knowledge he has never sold anything with this logo attached or associated, I went to his web page and found nothing referencing his logo on his items or otherwise.

If the filing information he gave me is correct (I cannot find it with that reference #) it most likely is a copyright not a trademark filing, If I file mine as a trademark, will that protect me?

I started selling my items with my logo about the same time he says his was registered.

Hints, tips, clues... any one?

 

[divgradcurl]

Why did you delete the name of your state question?

I searched the copyright and trademarks here in the US and in the UK (his location) with the registration number he provided but came up with nothing...

If he doens't have a US registration, then he probably cannot stop you from using the logo. You should check with the USPTO and search under the company name to see if they have filed a trademark application.

If they have not filed in the U.S., you may be able to file for a trademark yourself. However -- two things to consider. First, even if you do get a trademark, since he is already using the mark in commerce, you may not be able to keep HIM from using his mark -- but you will be able to protect your mark. Second, if he has filed in the UK for a trademark, there are some new rules (that I am not expert at) under the Madrid Protocols that allow for cross-border simultaneous filings. I would assume that a Madrid filing would also appear as a USPTO filing, but I can't say for sure.

Do some more checking around to see if he has applied for anything here in the U.S. first.

Do you think the marks are so similar as to cause confusion? I don't think so but whats your thoughts?

Personally, I don't think there would even be a trial -- those marks are so close that you would stand a good chance of losing an infringement case at summary judgment...

 

[Bounder]

My state is: California

I have more information and questions.....

The gentleman registered his "logo" as a copyright with the UK copyright office on sept 13th 2004, he states it has been in use since the registration date, but his web site that sells his product did not have the logo until tonight (after i asked for providence of the mark) and searching through all web links he has never displayed this mark "logo" at any previous time... at least not on the web.

We have proof that our logo was created on March 4th 2003 and fixed into a tangible medium (a computer file) on that date.
We also have proof the first time our logo was used in international trade (ebay sale that included all countries) on Tuesday August 24th 2004

We have not yet registered our logo by filing a copyright or, nor has he or us registered our logos as Trademarks.....

So... where does that leave me? by date alone we have the inception of our logo more than a year before, and the use of the logo in sales/trade nearly a month before he filed for his copyright in the UK.

If I file now for a trademark, am I in the clear? can he still claim copyright infringement for a non-trademark that was registered and used after ours?

 

[divgradcurl]

The gentleman registered his "logo" as a copyright with the UK copyright office on sept 13th 2004

The UK Copyright, won't protect him in the U.S., for one thing. Second, a copyright doesn't protect you if someone comes up with something similar or even identical, as long as the second person came up with their idea completely independently -- a copyright protects against copying only.

We have not yet registered our logo by filing a copyright

You don't even need to register a copyright anyway -- copyright protection attaches automatically upon creation, as soon as the idea is "fixed in a tangible medium," to use the terms of art.

So... where does that leave me? by date alone we have the inception of our logo more than a year before, and the use of the logo in sales/trade nearly a month before he filed for his copyright in the UK.

Well, if he hasn't filed for protections in the U.S., that leaves you essentially in the clear. There are no "international trademarks" or even "international copyrights." If he really, really go a bug up his but, he could come to the U.S. and try and sue you for copyright infringement under U.S. law (U.S. law will recognize foreign copyrights). However, the U.S. does NOT recognize foreign trademarks.

If I file now for a trademark, am I in the clear?

Yes, with the caveat I mentioned in a previous post. If he is already using the same or similar mark in commerce by the time you actually get your registration (which is usually at least 18 months after filing), you may not be able to stop HIM from using his mark -- however, he won't be able to stop you either.

Unless he files for protections in the U.S., he can't stop someone in the U.S. from using the same or similar mark in commerce. Like I mentioned above, I suppose he could potentially try and file a copyright infringement suit -- but he would have to do it in the U.S., with U.S. lawyers under U.S. law, and as long as you have some evidence to show that you came up with your logo independently from him, you would most likely prevail.

I guess he could also potentially file a suit to either get your registration revoked or denied based on his prior usage of the mark -- but that, again, would require him to travel to the U.S., hire U.S. lawyers, and head off to U.S. court to prove that he a) had acquired common-law trademark rights through usage, and b) you were infringing.

Unless you guys are making a mint selling these figures, I wouldn't worry so much.

Final caveat: If you are going to sell your figures in the UK, or over the net where someone in the UK could potentially purchase them, then you might be subject to the UK laws, and who knows (I sure don't) what the ramifications of THAT would be...

If you are going to file for a trademark, you might want to talk with a trademark attorney who can either a) take care of acquiring the trademark for you, or b) if you don't want to pay for an attorney to prosecute the trademark, at a minimum it might be worthwhile to talk with an attorney who can review ALL of the facts of your situation and advise you accordingly.

Good luck.

 

[Bounder]

I spoke with an attorney today and she pretty much mirrored your position... good call!