Similar Confusing Trademark? Online Company

[geekygal]

I currently have been running a website for close to a year and have decided it is time to file a trademark as it continues to grow. Lets call it "Website Social"

Upon doing a search i have found a trademark has been filed in the same city as me and one that is in the exact same industry as mine. It is called "The Website Network" (website has been changed other words are the same)

It turns out this trademark was filed 2 weeks before i purchased my domain name of "website social". It is currently in the "Advertised" potion of the Canadian Trademark process and is filed as "Proposed Use in CANADA".

I believe they currently are already operating a website even though it is filed as proposed use. My site is quite popular and has been in use for the full year, set up under a corporation in Canada.

My questions are, i know i can appeal the name for $750 but im not sure if i have any leg to stand on. Are the names different enough? How does the "confusing trademark" work? What are my other options at this point? Filing in the US instead?

 

[dee_dub]

What is it you want to appeal or challenge? The granting of the trademark THE WEBSITE NETWORK to your competitor? Their registration of the domain name THEWEBSITENETWORK.com (or whatever it is)? Something else?

Assuming you are talking about a WIPO challenge (from the mention of $750), you would need to first have your name trademarked. Then you'd need to show confusing use by your competitor. I'm tempted to say you would not succeed - that WEBSITE NETWORK is not confusingly similar to WEBSITE SOCIAL. "Social" and "network" are two rather different words. If you're really interested in how the WIPO reasons about these things, check out a recent decision here: http://www.wipo.ch/amc/en/domains/decisions/html/2009/d2009-0353.html


This doesn't mean you can't file your trademark in Canada. The Canadian trademark office's test is somewhat different than the WIPO's, but there's a good chance you would get the same result - your mark is not confusingly similar to theirs, and they can both be trademarked.

 

[geekygal]

Ok.. Guess that was a bit confusing...

I am only concerned about applying for my trade mark... I personally dont feel "the Website network" is close to "website social"... but because we are both social networking websites i was concerned there may be an issue when i apply for my trademark.. hence bringing about the appeal process so i can say well "mine is currently active for the last year.. and there's just is pending"

I hope that makes more sense...

 

[dee_dub]

If you're only interested in registering your own, then I would suggest you don't challenge theirs, and file yours. They can try challenging yours if they want to spend $750 and make the confusing similarity argument. (For my money, they're not confusingly similar.)

 

[Michael Wechsler]

You can register your own and put down a date that is prior in use than theirs. The fact that you registered prior to their registration date is an indication of a lack of bad faith on your part to infringe upon their trademark. WIPO will very likely not permit them to compel you to return the trademark to them. It's also difficult to say more without knowing what the trademark is for - it could be on the words and stylized design/symbol.