I'm About To Get Sued

naptown CR

If he has not registered the name as a trademark how is he going to sue you for trademark infringement. talk to a lawyer, let him sue and when he does counter sue for atty,s fees, lost time etc etc.
Do not allow yourself to be bullied.

Zinsco

So far all we know is a construction worker is threatening a lawsuit. I would not give this more than 2 seconds of thought. If a real lawyer sends a letter, I'd give it some more thought. It's ridiculous to let a construction worker get you spun up.

naptown CR

I believe the letter from the lawyer has occurred

KennMacMoragh

I wouldn't call him or talk to him, if he writes any letters just consult your attorney. But I have known several companies with the exact same name and never heard of a lawsuit. There's at least one other company with my same name too, but in another state.

Zinsco

I'm curious why you believe this since the OP has made no mention of it.

naptown CR

Perhaps I am confusing this with another thread
My apologies if that is the case

480sparky

If you think suing over a name is frivolous:

Check out the Univertisy of Wisconsin suing schools, cities, and business across the country over a single letter.

http://findarticles.com/p/articles/m...g=content;col1

http://irishwalsh.blogspot.com/2006/...to-you-by.html

__________________
Site : the area or exact plot of ground on which anything is, has been, or is to be located.
Sight : The power or faculty of seeing; perception of objects by use of the eyes; vision.
Cite : To mention in support, proof, or confirmation; refer to as an example.

smeagol

you were on television

DCPP

My advice to you, is to atleast sit down with 3 attorneys. It will cost a little bit of money but it will be worth it.

3 attorneys gives you a good idea as to what your looking at. Remember attorneys are nothing more than good bullcrappers. By seeing 3, you get a realistic idea.

If you are served paperwork it becomes serious. DO NOT think you can not respond to a summons. If you feel you are up to it, you can submit a response to the summons yourself, however you will need to contact the court directly and get the guidline booklet, it may cost like $25 but it will tell you the guidelines of how to submit paperwork.

However I STRONGLY like, VERY VERY STRONGLY advise you do not take this route.

Chances are this guy is blowing smoke using his name, reputation and overall size, to bully you into something you dont want to do. Companies do this ALL the time in the United States. They use their shear size to intimidate others with no intention of follow through... If you submit they win.

my advice: consult counsel. We here on the forums can only give general responses, however we, dont know the individual circumstances, laws and regulations for your particular area. An attorney can tell you this.

I have found that high end 'low name' meaning not the full page ad's, generally offer better results.

When/if you have further contact with this person, write down his name, what you talked about, time and date. If E-Mail is sent print it out. save ALL coorespondence(sp). Also, try not to respond to his E-Mail. If you must keep it simple and formal. Say something like;

Dear Bob,

I have reviewed your E-Mail and am forwarding it to my attorney.

Sincerely,
Your friendly Neighbor

Dont feel obligated to disclose who your attorney is, if you dont have one. He wants to BS, you can BS back if you dont have one on retainer... He may drop the whole thing if he finds out you have an attorney on retainer. But dont make it 'obvious'

This IS a serious issue. Do not take it lightly. While on one hand he could be just blowing smoke, yet on the other, he could be serious. You dont know. Be prepared.

Dont forget, GM owns the North Star name for their engine that requires a $50 specialty socket lol

at the end of the day, talk to an attorney, and be honest. From what you have said, it seems to me like a bluff. but dont get caught with your pants down.

J F

I think this is what is causing the confusion regarding the other guy's attorney.

macatawacab

A serious letter is Certified. Regular mail is attorney charging their client a few Benjamins for a muscle flexing letter.

I don't know what an "apparent" warning is??

J F

I'm guessing he was told a letter was coming, but hadn't received it yet.

Heritage

Correct

Now I've had some time to do some research.

Apparently, you don't need to register a trademark to sue for infringement. State registration gives you some strength, Federal registration is the same but becomes a nationwide registration. Here in Canada it's the same, but we call it Provincial and Federal (vs. State and Federal).

I copied the following from a couple of sites on the net that summarize it quite well:



Rights in trademarks are acquired through the use of the trademark; by using the trademark in a geographic area, one acquires certain rights under common law.

One seller unfairly competes with another seller by adopting and using a trademark that is confusingly similar to the prior adopted and used trademark of the first seller.

The touchstone of any trademark infringement case is the likelihood of confusion—that is, the alleged infringer will be prohibited from using a trademark on a competing product if that use causes a likelihood of confusion in the mind of a relevant purchaser. Courts have set forth a number of factors for determining the likelihood of confusion, such as the closeness of the appearance, sound, and meaning of the conflicting marks; the relatedness of the goods on which the marks are used; the channels of commerce in which the marks are sold; and the sophistication of the relevant purchasers of the goods. Thus, in analyzing any trademark infringement situation, all of these factors as well as other relevant factors not mentioned must be considered.

A trademark owner has several remedies if trademark infringement is found. First, the trademark owner can obtain a permanent injunction prohibiting the infringer from using the infringing mark or any other mark that is confusingly similar to the trademark owner's mark. Second, monetary damages to compensate the trademark owner for the infringement can be awarded. These damages can be increased up to three times if the trademark infringement is deemed to be willful. Third, the court has the discretion to award to the trademark owner its attorney's fees for bringing the action.
Another main area of unfair competition law is trademark dilution. As mentioned, the touchstone of trademark infringement is the likelihood of confusion. However, in some cases the likelihood of confusion is not present, but there is still damage done to a recognized mark by a second seller's unfair use of it.







Now, he could also sue for "Passing off" and that is explained below:







Passing off is a common law tort which can be used to enforce unregistered trademark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill.
The law of passing off prevents one person from misrepresenting his or her goods or services as being the goods and services of the claimant, and also prevents one person from holding out his or her goods or services as having some association or connection with the plaintiff when this is not true.
Contents

• 1 Passing off and trademark law
• 2 Elements of Passing Off
• 3 Extended passing off
• 4 Reverse passing off
• 5 See also
• 6 Notes

[edit] Passing off and trademark law

A cause of action for passing off is a form of intellectual property enforcement against the unauthorised use of a mark which is considered to be similar to another party's registered or unregistered trademarks, particularly where an action for trademark infringement based on a registered trade mark is unlikely to be successful (due to the differences between the registered trademark and the unregistered mark). Passing off is a form of common law, whereas statutory law such as the United Kingdom Trade Marks Act 1994 provides for enforcement of registered trademarks through infringement proceedings.
Passing off and the law of registered trademarks deal with overlapping factual situations, but deal with them in different ways. Passing off does not confer monopoly rights to any names, marks, get-up or other indicia. It does not recognize them as property in its own right.
Instead, the law of passing off is designed to prevent misrepresentation in the course of trade to the public, for example, that there is some sort of association between the business of defendant and that of the claimant. Another example of passing off is where the defendant does something so that the public is misled into thinking the activity is associated with the claimant, and as a result the claimant suffers some damage, under the law of passing off it may be possible for the claimant to initiate action against the defendant.
[edit] Elements of Passing Off

There are three elements, often referred to as the Classic Trinity, in the tort which must be fulfilled. (Lord Oliver reduced the guidlines laid out by Lord Fraser in Erwen Warnick B V v J Townend & Sons (Hull) Ltd [1979] AC 731, 742 (HL) [Advocaat] to the three items in Reckitt and Colman Products [1990])
These are:
1) Goodwill owned by a trader
2) Misrepresentation
3) Damage to goodwill
Plaintiffs have the burden of proving goodwill in its goods/services, get-up of goods, brand, mark and/or itself per se.
The Plaintiff also has the burden of proof to show false representation (intentional or otherwise) to the public to have them believe that goods/services of Defendant are that of the Plaintiff; thus, there must be some connection between Plaintiff’s and Defendant’s goods/services/trade. They must show likelihood and/or actual deception/confusion in the public. Deception/confusion, however, does not consider a ‘moron in a hurry’. (See Morning Star Cooperative Society v Express Newspapers Limited [1979] and Newsweek Inc. v. British Broadcasting Corp., [1979] R.P.C. 441 by Lord Denning.) It is the Court's duty to decide similarity/identity of the marks/goods/services the criterion of which often fall under three elements: aural, visual and conceptual similarity (often applied in trade marks infringement cases).
In relation to the element of damage to goodwill, there may be loss/diversion of trade or dilution of goodwill. The Plaintiff need not prove actual or special damage; real and tangible probability of damage is sufficient. This damage should however be reasonably foreseeable. It is insufficient to simply show likelihood/actual deception and/or confusion.
Ultimately, the Court must use common sense in determining the case, based on evidence and judicial discretion, and not witnesses.
It should be noted that disclaimers may be insufficient to avoid passing-off or cause of action (See Asprey and Garrard v. WRA (Guns) Ltd [2002] FSR 30.) However, this was expressed in the dicta of the decision.






Apparently, very very few infringement cases ever make it to trial. Most "infringers" are scared away after the first warning.


Most big companys "flex" their muscle and most people back off, in the face of expensive and time consuming defence. This is legal bullying.


If he is serious, I think he has an uphill battle ahead of him. His weakest arguments lie in the fact that "North Star" is very generic. The "consumers" in our industry are very sophisticated shoppers and thoroughly investigate our services before ever hiring (vs. Imagine purchasing a can of Coke). They are far less likely to be deceived. Then comes the dissimilarities in our services and demographic markets, the fact that our companies have different physical presence in advertising, and the fact that he has not incurred any damage from our existence.


Now I did some investigation into the other company, North Star Corporation (the guy he let get away - as he puts it that I mentioned earlier)...I was wrong, he is not a PM/Design/Build company BUT a BUILDER/DEVELOPER Just like him . ALSO a part of the same builder's association.


Wondered what happened there because they have been around for 11 years...8 years after him.

__________________
Toronto General Contractor-Renovation Blog-Contractor on Facebook-Renovation on twitter-Contractor Youtube

dgswfla

Totally a question for your attorney. Anyone that thinks they can predict the outcome of a court room has never been in one.

Astrix

I just want to remind you to try your insurance first as per my earlier post. If they accept your claim as a covered peril then all the legal costs will be covered and it won't cost you a cent. The deductible applies to any court award only. The insurance company will hook you up with one of their lawyers who will be specialized in the type of claim you are presenting.

(Just trying to save you some money.)

Kenny K

yep, the legal bills can run up very fast, meter is always on been there done that. consult local alderman chamber of commerce, etc.

__________________
Replacement Windows and Vinyl Siding by Illinois Remodeling Company

Astrix

That's for sure, Kenny K.

Another item I should mention is that most insurance policy limits refer to the actual damage or the actual court awards only. Legal expenses and claims adjusting expenses are separate and there are no limits.

So, if you have a $1,000,000 Commercial General Liability policy, you can easily have $500,000 in lawyer's fees and it's "no worries" as Crocodile Dundee would say. The insurance company pays all that, then, if you lose the case in court or if it is decided to settle out of court, you still have access to the full $1,000,000 to pay for that award.

Check your policy though or ask your broker/agent. Unfortunately, some policies will read that the limit includes expenses.

(You get what you pay for. If you insurance is cheaper than the next guy's and you both have $1,000,000 limits, then it could be because of this. Sneaky brokers - damn.)

R.G. Barnes Co.

Hey friend don't get to worried about that threat. Even if he had his name trademarked, he would have to prove that, by you having your name caused him to lose income. The proof is his burdin, not yours. I have an MBA and it does not qualify me for legal advice, but i have had issues with trademarks and copyrights.
Unless he has a magical lawyer with Merlin like talents, he aint got a chance. My advice, call a lawyer. Even go by and get the lawyers card. When the turd threatens you again, give him the lawyers card.

Oh yea, one more thing that will help you feel better. Draw you'r leg as far back as possable and deliver a well placed kick to the marble area of the trud. As he falls to the ground and the sounds of anguish and pain fill the room, you will feel so much better.

Good luck, but he hasn't a case.

timmyjohn03

Really the main problem facing this whole thing is why did the name search pass to begin with? I want to be on your side, but the registration should never been allowed in my opinion. The Brick had a battle with a small business in Winnipeg registered for many years. The little guy won, but at what expense. To be fair, you should pay for legal advise, and never mind what I think, because in the end the law will stand. I wish you well.

timmyjohn03

Sometimes a complainer just needs to find another leg to gnaw on, then all is well again.