I registered the domain for my business in April 2008. The name of my business is Guru of the Office. Yesterday I received a letter from an attorney in Florida saying he represents Superior Uniform and they own an offshore company Office Gurus and this is their registered trademark. The name was filed for Trademark in August 2008 and the domain name was bought in April 2009. I did some research I think their attorney missed up and missed the fact I was already using the name. He wrote in all caps that I have 5 days to stop using it. He sent a letter in my mailbox, an email , and a certified letter. I was not home when the mail came so I have not intentions of going to get the certified letter at the post office. I did email him back and show him when I registered my name. I was wondering if anyone has had a similar issue.

I'm definitely no authority on this issue, but he may have a point, albeit a sucky one.

1) You said that you registered the domain name. Did you register your business then as well? Anyone can use any domain name they want as long as it's available for purchase (I think), but registering a domain name isn't the same as registering your business.
2) When you register your business with the state, you're basically applying to be allowed to use that particular name. It doesn't mean that you own it. If you actually go through the steps to have it trademarked, however, you would own it and no one else could use it or any of the "key" words (like Guru and Office depending on how it was trademarked - I'm not sure that you can trademark "office"). So, if someone comes behind you and trademarks the name as their own, they may have a leg to stand on, but if you can prove that you registered your business with all the proper authorities (not just the domain name), you may be able to fight it. (not positive about all this "Which came first? The chicken or the egg?" stuff, but I think it works something like this)

So registering your domain name in April 2008 means absolutely nothing in the scheme of things. If you didn't register your business prior to August 2008 then you probably will have to cease and desist. I'm really sorry you have to go through this. That's one of the things that makes me a bit nervous.

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Stephanie
New VA in the research phase :daisy:

By the way, have you GOOGLED yourself? There's another VA business in Portland, OR with the exact name that this lawyer said was trademarked. I wouldn't call that "offshore" so I'm wondering if they were targeted as well or if their business was started before the trademark date, making them exempt.

On a side note: I assume you said that you weren't going to pick up the certified letter because you don't want to sign for it or have any record that you know of it's existence (that's the only reason I know for someone not wanting to pick it up), but didn't you provide that to him already when you replied to his email?

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Stephanie
New VA in the research phase :daisy:

You are being pressured to discontiue use of your business name.

Although they can take you to court, they do have a weak case. You will need to find out what state they are filing in and I would recommend you sign for the certified letter.

Week cases normally do not get won. For instance Entrepreneur Magazine tries scare tactics such as this to keep people from using the word Entrepreneur.

Trade Marks are done according to How the words are used as well as the type face and exact word usage.

That is why cases such as these are hardly ever won. But, the best way to handle this is to make sure you are using a lawyer to reply to their letters.

A prepaid legal service can help you with this as well as a lawyer.

Good Luck!
Andrea~

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Action Jackson Virtual Assistant|

Ok.... What Andrea said... LOL

Do you think it would be worth her while to contact the other business to see if they're being harassed as well?

Also, just to clarify, so you're saying that it's very hard for someone to trademark a word by itself? It has to be the word + font + logo design or something like that? Unless, of course, it's a word that they coined by themselves (i.e. Coca-Cola).

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Stephanie
New VA in the research phase :daisy:

I received a letter that was sent first class mail. I am not trying to deny getting I just don't want to waste my time by going to pick up the letter at the post office.

I did a little research. There is a common law use of trademarks. I think mine would could fall under that. I think the attorney when he registered the name he did not catch I was already using it. It even states that it is hard to find common law uses. My husband was threatened to be sued by a state newspaper because he had a local page Fayetteville Arkansas Online and the state page was Arkansas Online they just dropped it when he refused to take is down.

I did get a reply back from the attorney. He says yes I had the name first but I can only do business in Arkansas. I am going to check with some attorney's after Thanksgiving and for now just enjoy my Thanksgiving with my family.

Hi Stephanie,

Yes, in doing my research for the article I wrote about Copyright Infringement in the November Issue of the TVE I ran into the Trademark infringement laws.

When I went to trademark my business name The Virtual Entrepreneur, they request that you set a font (type face) and style (name of font, size, Bold, Italic etc)

It is a very detailed trademarking system the government uses.

If a logo is to be used with the trademark you can upload the logo as well.

No, I do not think she needs to contact them in any way shape or form as this can lead to them recording the conversation and her admitting, whether she admits it or not, that she did indeed understand she used a trademarked name.


Andrea~

Please note I am not a lawyer and am not giving advice as a lawyer, but I am suggesting, from my research on these matters, that you take this very seriously.

Originally Posted by StephanieP

Ok.... What Andrea said... LOL Do you think it would be worth her while to contact the other business to see if they're being harassed as well? Also, just to clarify, so you're saying that it's very hard for someone to trademark a word by itself? It has to be the word + font + logo design or something like that? Unless, of course, it's a word that they coined by themselves (i.e. Coca-Cola).

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Action Jackson Virtual Assistant|

Hi Lisa,

I suggest downloading the November Issue of the TVE here on the VAF.

You can go to the links that are provided in the article. They will take you to the laws that govern trademarks, copyright etc.

Again, their case is weak. Currently Entrepreneur magazine is paying bundles of cash for wrongful use of the law against many individuals who use the word Entrepreneur.

You need to pick up the letter as it could be a legal document stating where they are filing against you. You will need to give this information to your lawyer.

Good luck,
Andrea~

Please note I am not a lawyer and am not giving advice as a lawyer, but I am suggesting, from my research on these matters, that you take this very seriously.

Originally Posted by lisaault

I did get a reply back from the attorney. He says yes I had the name first but I can only do business in Arkansas. I am going to check with some attorney's after Thanksgiving and for now just enjoy my Thanksgiving with my family.

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Action Jackson Virtual Assistant|

Thanks Andrea

I figure their case is weak and I have contacted an attorney.

Lisa