Discover how trademark, patent, and software law can help small business, entrepreneurs, and inventors. Check my blog for questions and answers.

Someone registered my trademark and copied my website. What now?

Didn't get our pending trademark and now the company that did stole the words off of our site verbatim!

So we had filed our trademark and received a notice that we needed to change the name because it was too close to a trademark that was pending. We changed the name slightly and re-filed. We were told that if the first trademark that was pending were to fall through, we would get ours.
Unfortunately -the first did not fall through. But after our site was up and running, they took all of our information on our site (literally word for word) and started their site. They have slightly different products (but the same "idea") and took VERBATIM what it says on our site.
Now they have the trademark - but our site is far more popular and successful. Furthermore, they took the information right off of our site! How can we protect ourselves?

~ New York

I am going to make some assumptions. First, I assume that you are applying for a US Federal Trademark Registration (and not a state registration). The US Trademark Office does not send notices that names need to change. The US Trademark Office will refuse registration based on likelihood of confusion, however, similarity is just one part of that analysis. Refusal of registration is not the same as an order to change a name -- the US Trademark Office does not have that power, only a court of general jurisdiction would have that power.

The next assumption is that you are not using a lawyer. You said, that you "changed the name slightly" and re-filed. If a trademark is refused for "likelihood of confusion" than a slight change would not be likely to change the analysis. So, it is not clear why you "changed the mark slightly and refiled." Did someone tell you that a slight change would overcome the refusal?

To be fair, it seems that you do not understand even the basic principal of trademark law: Trademarks prevent customers from becoming confused about who is providing them with stuff (where the stuff can even be information from a website).

So, given these assumptions, I am going to further assume that you want to continue to represent yourself. You need to visit your local law library. You need to read about at least the following:

  1. trademark likelihood of confusion
  2. trademark common law rights
  3. trademark priority contests
  4. copyright benefits of federal registration
  5. copyright DMCA act
  6. copyright elements of infringement

There are likely also other areas related to unfair competition or intellectual property that will also apply to your situation. The law librarian will likely be very helpful for identifying a legal treatise that will help you understand these issues. It will be unlikely that you will be able to learn enough about these issues from an online legal source to represent yourself effectively.

Finally, I would be remiss if I did not recommend that you talk to a lawyer.

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