race to name company

[Jacksplat]

I received the papers today for my named corporation in Canada. I had the first search done on Jan 9 2008 for the name itself. Coincidently someone else did a namesearch on January 15th. I've dug deeper and see someone else getting ready to run a different, but somewhat similar business. This isnt 100% a domain issue, although I do want to protect my domain in this as its exactly the name involved in .ca ... they have the .com. I contacted them a year ago to buy it, it wasnt being used at the time but also wasnt for sale. They are a corporation under another name but operating a division under the name in question. The site presenting their business is now up and running.

I'm looking for advice and perhaps a quick solution to trademark the word/s in question. Is there anything else I should be doing ?

Any input would help at this point. I'll be on the phone alot tomorrow hoping to secure my business name. I plan to market this once I'm set-up. My biggest fear is they are at the tm office now marking the name.

Jack

 

[myst woman]

Trademark your company and let the legal burden fall on them. Do you have a record of the cleared trademark search?

 

[DNQuest.com]

Trademark your company and let the legal burden fall on them. Do you have a record of the cleared trademark search?

Trademarks are earned through usage in commerce. You can file for "intent to use" to help establish a date. Plus, if they filed fo TM status, file an opposition to the application.

 

[RatherGood]

I received the papers today for my named corporation in Canada. I had the first search done on Jan 9 2008 for the name itself. Coincidently someone else did a namesearch on January 15th. I've dug deeper and see someone else getting ready to run a different, but somewhat similar business. This isnt 100% a domain issue, although I do want to protect my domain in this as its exactly the name involved in .ca ... they have the .com. I contacted them a year ago to buy it, it wasnt being used at the time but also wasnt for sale. They are a corporation under another name but operating a division under the name in question. The site presenting their business is now up and running.

I'm looking for advice and perhaps a quick solution to trademark the word/s in question. Is there anything else I should be doing ?

Any input would help at this point. I'll be on the phone alot tomorrow hoping to secure my business name. I plan to market this once I'm set-up. My biggest fear is they are at the tm office now marking the name.

Jack

In Canada all you have to do is file your application and then use it. It doesn't have to be in use before hand as far as I know (or at least thats how it works for mega corporations filing marks in Canada). The application is treated as a "notification" that you intend to use the mark and your rights to the name in a dispute start AFTER you get the mark whether you use it before hand or not.

If you are not already doing so you should be incorporating this name federally and then extra-provincially. Incorporating names federally is only slightly harder as far as I know. Provincially you can practically register anything similar to any existing company in any province you want to. The whole NUANS system is just another Made in Canada government mandated scheme for more of your cash.

"The Brick" managed to quash another furniture store rights to their business name (it had brick in it somewhere, like "brick furniture") and incorporated provincially several decades before "The Brick" even existed. "The Brick" incorporated federally to get usage of the name. Despite a litany of evidence against "the brick" for prior usage and basic common sense the courts still ruled in the favor of "The Brick".

 

[Jacksplat]

Thanks all.

NameJet: Can I get my TM online ?

I considered hiring the job out but apparently it will cost an extra 1000+ for the service.

Jack

 

[Dave Zan]

Is there anything else I should be doing ?

You're in luck. Contact Zak Muscovitch.

 

[DNQuest.com]

Thanks all.

NameJet: Can I get my TM online ?

/QUOTE]

Are you currently using the name in commerce and has that name gained secondary meaning? Or do you have an intent to use? If this is truly important, I sugesst spending the extra money to protect yourself. Did you file an oppostion to their application?

 

[Jacksplat]

I filed the application and it shows in the search. Apparently with cipo they take great consideration to whoever applies first. They can oppose but I belive they have to make a big deal about it. My application is legitimate and although date first used may not be important, I did use the name sake in a few transactions through my sole proprietorship going back to sept of 2005. Once the TM is secure, I'll bring the name into the post.

Thanks to the few who gave input. A few short sentences can always help.

Jack

 

[domain newbie]

i don't think you should think about it much, especially if their TM is not in Canada you can register same trademark in different country or in different category

also if they registered TM as "name" you can still go for TM :"name.com" or name.ca" in your case

but i dono really

 

[Gumby]

There is a difference between a trademark 'TM' and a registered trademark '(R)'. Probably best to place the TM symbol next to your company name on your website and any other public face of your company immediately, as it shows that you are using that name as your trademark. Apply to register the trademark asap.
Seek professional advice.