Business name the same, product same conflict of name

[DavidTechman]

Hi all

Hope you can give some insight, Im from UK before i start.

October last year i had a plan for a product which would become a brand.
November I registered the domain and social media accounts, and I set motion for design, and samples, to get the product right.

On december 26th someone in America registered a domain similar.
On January 16th they had a product, but not a branding.

Best example to describe this is for example Clothes or even T shirts.

SO in this example I was getting material, labels, swing tags, packaging and design for the brand.

The american was using same name, but was reusing other brands material, ie using a tshirt made by company, which has their neck label, but they stuck the name of the brand i was building on the front of the shirt, because they could have a fast turn around to get product produced.

My brand uses 3 words

Theirs uses 2 words, the same first two words of mine, but they often refer to themselves as the name i wanted to use.

the Instagram account i set up, they blocked me so I wasn't able to use search function to see conflicting name, I only found out when i logged in to a friends account to manage his socials.

The end product is the same, and audience and targeted consumers are the same.

Any advice would help, I was planning to register the trademark, and even searched and couldnt find anything, they are claiming they have registered their trademark and registered as LLC which i cant find info of.

thanks in advance

[flipflopphill]

Hello David

I'm not an intellectual property lawyer, but I do have a couple of decades of experience in product design and have gained some understanding of intellectual property law.

Its hard to be specific without you telling us what the product is, but there is some general advice I can give:

1) Trading name and domain name.

To assert rights over a trading name, trade mark or mark, you generally have to register, or show prior use of that mark within the relevant jurisdiction. Use in the UK can extend to Europe & other teratories by treaty, but I'm not sure, or confident of how that works between the UK and USA. I would like to research this. (I've never dealt with USA related issues / designs).

Basically there are no restrictions on using the same name in different territories unless you have made you name known in the other territory prior to your competitor / imitator.

If you didn't use the name in the USA or apply for a trade mark, i'm afraid that you probably have no legal protection in the USA.

Though they cannot use the name in the UK, EU (possibly NZ & Australia too) if you have acquired the rights (via usage or registration) here.

2) Copyright

If there is originality and or artistic merit to an IMAGE you have created, your copyright will be valid and enforceable if slavishly copied in the USA.

2) Design right (i.e a products form)

UK / EU unregistered design rights do not transfer to the USA. But if your design has been made public for less than one year, you could still register it in the UK, then within six months apply to extend that right to the USA.

If you don't intend to sell in the USA then stop worrying about it.

If you want to sell into UK & Europe you are protected for 10 years UK, 3 years EU automatically. Longer if you formally register (with a fee)