American wants to Sue Canadian For Trademark Infringement

[whoaweird]

What is the name of your state? OR

I am Canadian, but this involves an American wanting to sue me for trademark infringement.

He has the same business name as us, but we have "the" in front of ours. He does not have his name trademarked. Our name has been filed both in Canada and the US for a wordmark. We are in different industries and different countries.

Our website started in 2006, his in 2000. However, his website has been, for much of the time, empty. There was no contact information, and there has been no legitimate business under his business name (his sole proprietorship expired in 2004 - had it for two years). He has been sending me all kinds of threatening emails, wants me to change my business name. Also wants to motion for a Federal court injunction to have my domain name taken away.

He also went bankrupt and it was discharged in 2006. I feel like he is just bluffing or he is trying to go after our website domain. Interestingly, just today, he updated his webpage and placed his contact information and a copyright date on it. The copyright date is much older than his website, so he is lying.

 

[Michael Wechsler]

I'd ignore him. The oldest practice in the book, especially by large corporations, is to threaten to sue for a claim that common sense dictates is absurd. The goal is obviously to scare into submission or settlement by playing on people's fears. With regard to the copyright... that's pretty funny because it really would have little bearing on the trademark, especially with your filing. I don't know all the facts but IMHO it sounds like a lot of hooey.

 

[canadian1]

American Suing Canadian

Hi there,

I am having the same sort of problem. I have received a few threatening emails saying this individual who has a small business doing web design is going to file a trademark infringement against me. I also do web design. I own the .ca address and she has the .com address with the same name. I am under the impression that she cannot file because we are both in different countries, she in the US and I in Canada. She has the company name trademarked in the US only. There is no trademark for the name in Canada, so I just filed to own that trademark here. She registered her domain name 5 months before mine, so I do not think she has a leg to stand on. She stated in the email that because one of my clients accidentally contacted her, thinking it was me, that us being in different countries is a non-issue and I am using her business name on the internet like it was my own. That is outrageous. I operate locally, and not only do web design; my business is also registered for computer repair and computer training. I have been using the name for many many years before I registered it because I am a sole proprietor, and I did not feel the need to register. Does anyone have any advice for me on this? Thanks so much for reading.

S.

 

[muggsyj]

This is not legal Advice!

Did you not read your reply?? The lawprofessor has cast his opinion, it is down to you to use the information provided.