I have a few questions for the pros here.

My company was recently (still is actually) on the receiving end of a c&d letter regarding the use of our business name and our domain url. Now, the company that sent it's lawyers after us DOES have a legitimate trademark that is registered. However, I feel that there are enough differences in our two companies that their claims aren't exactly right.

We will be conversing with our lawyer on this, but if someone can check this out it would be great.

Names have been changed for protection of course.

US:
Black Rabbit Solutions, Inc. - blackrabbitsol (dot) com
The company name is incorporated in the same state (strangely enough) as the company threatening us.

Our Business:
Fixing broken computers and general PC service for small businesses. Selling and building new PCs and notebooks. Remote PC support.

THEM:
BLACKRABBIT, INC - blackrabbit (dot) com

Their business:
Online business collaboration software.

Thier marks:
Both "BLACKRABBIT" and "BLACKRABBIT.COM" are their registered trade/servicemarks.

Now I understand that we are both "technology" based companies. But our incorporated name does NOT include spaces of any kind, and we aren't in the same business. Are marks CaSe Sensitive? What about word spacing?

We have no issues changing our name to something else. In fact, we have already chosen a new name and are in the process of changing identity. The problem however, is that these lawyers and this company expect us to do it all in 6-days. That is a bit unrealistic considering we have been doing business for well over a year and now have a few thousand clients.

I guess my question is...do they have a leg to stand on? Or can we tell them to shove it until we move when we are ready?

They haven't demanded control of the domain yet (luckily as we have thousands of partners and clients that we have to notify and rely HEAVILY on email)

I am not a legal pro but from what I understand the outcome of this case will mainly depend on who first started using the name for active business transactions/operations and if it can be proved [irrespective of when the TM was registered]

Now I understand that we are both "technology" based companies. But our incorporated name does NOT include spaces of any kind, and we aren't in the same business. Are marks CaSe Sensitive? What about word spacing?


Confusing similarity is what matters most.

we aren't in the same business.

That fact alone can work in your favor. Depending mainly on how the domain name is currently used, you might or might not stand a chance.

However, do let your lawyer handle it. That's what they're there for.

Set your lawyers on them. They haven't a hope of finalizing this in 6 days.

Marks arent case or spacing sensitive.

If they trademark BLACKRABBIT and you use BLACK RABBIT then that is an infringement yes.

As for differences between services and the like then this becomes more complex and its a job for your lawyers to sort it out!

If they trademark BLACKRABBIT and you use BLACK RABBIT then that is an infringement yes.

That depends on how black rabbit is being used. But no, domain names don't infringe trademarks per se by mere registration.

I was talking about trademarks not domain names, and yes it does depend on the service and if its similar to the mark holder... but i thought that had already been said and there is no need for an echo in the thread :)