I have an online domain / business name trademarked in the US. It is being infringed by a user in Canada. Can I defend it? I have asked the infringing person to cease and desist but he refuses unless 'he is forced'. Is there anything I can do to 'force' or intimidate him into giving up his infringement of my name and confusing the marketplace? The traffic to my website has been cut in half since he began infringing on my name and so it is affecting me a great deal, and cutting into future potential revenue. I have invested many years of time and money into the development and branding of my name and I feel that he is trampling on all that I have worked for. I don't have a lot of money to spend on 'forcing' him to stop using my name. What should I do?
If their mark is appearing incidentally on search engines here in the US, but they really have no market presence here and are not making efforts to promote or advertise here then there is nothing you can really do about that. The other maybe more importance question is who was using the mark first anyway? If they were and they also had a market presence in the US before you acquired your federal registration then they might have a strong legal argument against you. The facts matter greatly in such cases. Whenever we clear a mark, which I describe below, we also look at the Canadian IP Office as well because they are right next door, they speak English and they obviously compete in our marketplace. So what has been registered there can be critical. Before you do anything further you need to get a proper consult.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox Business News on the importance of the due diligence process and our overview guide.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
Best regards,
Frank
Natoli-Lapin, LLC
Trademarks are territorial. Accordingly, if he is marketing to customers in the US, you can sue him in the US and obtain an appropriate remedy. If his website is only targeting Canadian customers, then unless you have rights in Canada, you have no basis for suit.
I suggest that you contact an experienced Trademark litigation attorney who can advise you in confidence. Many Trademark/IP firms offer an initial free conference by telephone, video conference or in person if you are available locally and would be happy to speak with you. Call and speak with an experienced Trademark litigator who can assist you.
