I am so upset. I put a lot of work and effort into making a message board for homeschoolers in my area, and now I’ve gotten a letter telling me I can’t use the name HoustonHomeschoolers because this magazine owns “Houston Homeschooler” (without the s).
The thing is… their magazine is called “Homeschooling Parent.” “Houston Homeschooler” is the name of an insert in the magazine! (And by the way, the insert is shown on their site, and doesn’t even say “Houston Homeschooler” anywhere on it!)
How can I find out if they really do own this name? If they do, can I really not use mine which is plural?
This sucks! I bought the domain name, all of the graphics say “houstonhomeschoolers.com”… I think I’m gonna cry.
PS, I also own the domain “houstonhomeschool.com” (i misspelled the domain name when I first bought it, forgot the -ers). If the other really is trademarked, is that enough of a difference that I can use it?
I searched the US Patent & Trademark website, and neither Houston Homeschooler nor anything even close to that is registered. But the disclaimer at the top says that it’s possible the name is taken, that when you try to register and pay your $325, they do a better search to determine for sure. I need to know for sure, but I don’t have $325 to spend.
If it’s not trademarked, and I continue to use it, could they go and register it and then force me to stop?
I need a lawyer just to find out if they really own it? If they do, I don’t want to fight it. I’m not sure I want to fight with them at all. All I need is for this community to already start hating me.
Whoaaaaa! Relax, geez. A fight over a trademark is not going to make anyone HATE you. “Already” start hating you? You make it sound as if it’s normal for a community to hate you. Unless your name is “Timothy McVeigh” I think you’ll be okay.
You didn’t say anything about the specific contents of the letter. Was it a note from their attorney or was it just a pissy letter? The first thing I’d do would be ignore it and continue using the name. If they persist, then you can think about employing a lawyer. Just because they say they have a claim to it doesn’t mean they do; it’s not that they’re lying, but a lot of people and organizations can be a little overzealous in this sort of thing.
Or you could call them, talk to them, and try to work out a deal.
Not so much hate me as just really really dislike me…
It was actually a really nice letter. They said that I probably didn’t know they owned the name, and that as soon as we got this sorted out they would review my board in their magazine. That would be really good.
My husband woke me up with this at 6:30 this morning (three and a half hours before I normally get up), and I didn’t know what to do. First I changed everything on the board and sent them an email that just said I owned the domain houstonhomeschool.com and would that be acceptable? Then I felt like I let them push me around, so I changed it all back and sent them another letter asking for proof of their trademark (nicely). Then I realized how nutty I sounded sending them these little one line emails, and I wrote a nice one saying that if they owned the trademark, I’d change the name, but if not I was willing to put up a disclaimer saying I’m not affiliated with them.
I think it’s mostly lack of sleep, but I put so much work into this and I was so excited about it, and I really liked the name, and this whole thing is making me feel like I’m going to cry. Repeatedly.
Trademark law is fairly complex. Not only are there U.S. trademarks, there are also trademarks under state law and common law. In other words, you can get trademark rights in a term just because you have used it in commerce for some period of time, regardless of whether you ever registered it anywhere.
You just might need a lawyer just to find out whether they have a rightful claim to a mark. Otherwise, you might just have to take their word for it. Now, hiring a lawyer is going to cost you money, but it doesn’t mean you’re going to tick anyone off. A good trademark lawyer isn’t going to start off by sending nasty letters. He or she is going to start by trying to find out exactly what rights these other people have in the term.
Money might be a consideration. Remember, though, no matter what name you pick for your business, there is always a possibility that someone out there believes that that term rightly belongs to him or her.
IANAL but I work closely with an IP lawyer because I am the liaison for our Intellectual Property stuff…
There is already SOME protection attributed to the name if they have been using it first in a given juristiction – they do not necessarily need to register the trademark in order to benefit from a certain amount of protection in civil law. (That’s why there is a difference between “TM” and the “Circled R”.)
If it gets ugly and they challenge you in court, you will probably lose because they can establish the fact that they have been using the name well before you. Registering a trademark is always recommended however, because the courts tend to side heavily with the registered owner in cases where there is dispute over ownership.
If the name you are using is “very close but different,” you may still be infringing on their trademark if it “causes confusion” (ie/ people think that you are affiliated with the other organization). “Houstonhomeschool” and “Houstonhomeschoolers” are close enough that they would have a case if they chose to pursue it.
Hate to say it, but it may be prudent for you to start looking for an alternative for your site. If they challenge you in court, they won’t likely go after you for damages (doubtful they would sue you for money), but they could obtain an injunction against you which legally prevents you from using the name.
Be nice and polite and see if your disclaimer would satisfy them.
Just don’t foget that even if it isn’t registered it can still be protected by intellectual property laws. If they are a business that has been operating publicly for awhile, they can still initiate an infringement claim. I hate to be the bearer of bad news, but they have a much stronger position.
If you get a “cease and desist letter” on June 1, 2002 and then on June 4, 2002 you rush into the trademark office to hurredly try to register a mark that someone else has been using for a few years, you are not acting in good faith. That is a quick way to really tick some people off and find yourself paying for a lawyer. The courts are not so easily fooled, such an action would be pretty transparent.
IIRC, trademarks can end up being much more expensive to register in the U.S. than $40. It’s not so bad if no one challenges it, you may apply to register a trademark, but they can still challenge you and prevent you from getting it. Your application can be rejected.
