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Average Joe
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1,209 Posts
Discussion Starter · #1 ·
Long story short, trademark infringement.

My company - North Star Construction.
Other guy's - North Star Homes Inc.

US- Open for business 1 yr.
HIS- 20 yrs, 2 time Builder of the Year, well known/respected.

Some info:

-We are a registered company, licensed under this name, name search complete at time of registration.
-We never heard of them until today
-He is a New home builder/developer
-We consult,manage,design/build. We don't do new homes under this company name.
-Our logos look nothing alike
-None of our literature is similar.
-There are a slue of other North Star's in construction related sectors in Toronto.

I found out through my rep at the Builder's association, of which he is a member. He objected to my membership application due to our name. Now he wants to start a suit or force us to change the name.

I called him up, it didn't get me anywhere. He claims he will stop at nothing to stop us. I basically said, I understand his position but now it will come down to whether he has the legal grounds or not. His reply was, "I was hoping reason would prevail, but if you don't change your name I will fully pursue the legal route and I will put a lot of money behind it. It will cost both of us money but I won't back down, that's up to you".

Alright, so now I need your guys' opinions. Can he do it? Will he win? Changing our company name is going to be a huuge hassle.

BTW, he is not TM registered.
 

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bathroom guru
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1,348 Posts
What about North Star Windows and Doors or North Star Insulation??

I have seen better cases than what this guy appears to have, I'm no lawyer, but I don't think I would worry.
 

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Registered
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16,403 Posts
He is going to be pretty hard pressed to get anywhere with that. I guess he dont own the name North star as if he did he would be able to stop anyone from using it. Plus he cant do anything about the last part as it's nothing like yours. This reminds me of the Monster Cable trademark infringement where they tried to get every company with the name monster in their name to stop using it. They never got anywhere. Let him waste his money.
 

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Super Moderator
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11,965 Posts
I have absolutely no clue about how this works in Canada.

Near Chicago about 15 years ago, there was a hot dog joint called "Wheedies Weenies" (Don't ask-I didn't name it)

Anyway, the makers of "Wheaties" (the cereal) gave this place all kinds of crap because the name was a little similar.

That place is gone now but it definately made the papers. I dont know if it's demise was due to this or other things but they got some great community support out of the deal. Might not be an entirely bad thing for you if you can stomach the BS.
 

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Registered
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2,565 Posts
Alright, so now I need your guys' opinions. Can he do it? Will he win? Changing our company name is going to be a huuge hassle.

BTW, he is not TM registered.


I'd apply for the TM registration for his Co.name(if that's legally possible),since it's not officially taken.

Then see who's in a flurry to have to change his paperwork,not to mention,lost exposure.

Here,as long as the name isn't registered,TM is issued.
 

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The Duke
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14,746 Posts
I personally would still err on the side of caution. I wouldn't piss him off by making fun or belittling. If he wants to make your life miserable, he can. Even if he is not going to get anywhere, he could still make it a point to make your life miserable. If he has more money than you, he very well could just grab a lawyer and tell him to start making you bleed money just for the fun of it.
 

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Registered
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219 Posts
How far away is he? I personally wouldn't want a name even similar to someone else. Also, if he's well-known why had you not heard of him?
 

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Registered
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16,403 Posts
I guess the blokes got nothing better do than things like this. If he is a home builder then he has prob lost money in the last few years and aint got any work on. Every home builder i know is in trouble and have many homes sitting around doing nothing. He's prob just trying to pass time and cause someone else some stress.
 

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Dave from Macatawa
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277 Posts
first off, you have not been sued. Just threatened. Do not let this be a big distraction. Even if you get served a notice to appear, there is plenty of time to work on what you have to work on. Just be sure you respond within all deadlines.

If the other guy has money a lawyer will fight anything he wants them to fight. All they care about is if the funding is there. So he can make you miserable and cost you time and money.

If you want to keep your name, quitely go about shoring up your name, like Oldfrt said. Spend a couple of hundred on a one hour appointment with a good atty to see what your options are. ng)

Another good strategy is to find out who the other guy's attorney is. Make an appointment about anything except your name issue (business problems, advice, anything) and write a check to the attorney for their time. That way there is a conflict of interest and your opponent has to find a new atty.

Remember, if you have never been sued, you haven't done enough business.
 

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Registered
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15 Posts
The issue is not North Star, it is the similarites in services and the license designations held by each co. North Star Plumbing would be fine, which is why you see other trades called North Star. The court will note (1) the similarities in services/years established/name recognition/territory serviced, and (2) what license each person holds (CA courts anyway). If he is a GC he can't claim individual trades. Not your issue though. You are both GC's (same license designation?) with similar services ( he has years established/name recognition/territory). He would probably win in CA. I don't know your law, but if he happens to have a different licensing classification than you, that is the strongest argument given your facts. Typical stupid caveat:This is not intended to be legal advice. Best of luck.
 

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Los Angeles Remodeler
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84 Posts
No offense to anyone and I am sure a lot of people will disagree to what I am going to write here: I personally think a business name should be 2 syllables, not more and less or equal to 7 characters. Look at most business names you remember. Do they fall in that category? Dell, Google, Sony, Centex, Pulte, Lennar....

As another person above also noted, you dont want a similar name to someone else to have to explain all day every day, plus you want a unique Googlable name. Make up a new word that you can register for yourself for trademark etc plus something people remember.

I would spend my money renaming my business instead of paying for a lawyers new yacht.
 

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bathroom guru
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1,348 Posts
Just another thought...

Have you ever pissed this guy off?? Does he have a reason you maybe aren't aware of??

As I mentioned before and a lot of others have mentioned, I don't think this guy has a case, but, that does not mean he can't or won't sue (if he's pissy enough)

A good friend of mine who was in a partnership about 20 years ago left and started up on his own as he was getting screwed. He got sued for $1,000,000.00 After 5 years and (I think) $30K in lawyers bills, he had to give the guy a 12' aluminum fishing boat (with no motor).
 

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178 Posts
Sell him your DBA

Tell him that if he pays you $3k, you'll gladly change your company name. Otherwise it'll cost him lots more to have his attorney go after you. :shifty:
 
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