Trademark Disputes in NYC

Ask a New York City Litigation Attorney

It can be difficult to know for sure if a trademark is legally protected or not. Trademark law protects names, logos and marketing tactics or devices that are unique to one company or industry. This type of trademark would be considered "strong" and legally protected. A strong trademark can either be born strong or they can become strong. If the trademark comes out of the ordinary or is created from the beginning then it is considered "born strong;" examples include Kodak and Yahoo.

If a trademark becomes well known over time then that would be an example of becoming strong. A trademark can become strong if the owner shows significant sales and public awareness of their trademark. This process is called secondary meaning, some examples would be Bank of America and Peet's Coffee. Weak trademarks would simply describe quality of the merchandises based on a name or term and these are generally not protected in trademark law. If you have a question about a trademark and whether or not it is legally protected feel free to contact a New York City litigation lawyer from our firm.

Types of Trademark Disputes

Oftentimes disputes arise regarding trademarks, such as:

  • A third parties intentionally choosing a domain that is similar to another trademark in order to confuse the difference between the two
  • A situation in which it was not clear whether or not the domain owner registered a name or trademark in order to receive goodwill from another trademark owner's success
  • Cybersquatters who register misleading domains intentionally and effect the actual domain owners (Ex. www.aircanada.com) Viewers may think that is the site for the airline but it is not
  • Conflict between two companies or parties that have the same name for their domain (Ex. If United Airlines and United Healthcare both want the right to www.united.com)

Conflict arises when trademark owners want to expand their marketing to the internet and assume that their domain names are trademarked and they can have their company name online. On the other hand, domain name holders follow a "first come- first served" approach to registering domain names. Disputes come about wherein the trademark owner will sue but the domain name owner will argue that trademark law does not protect situations like these.

Resolving Trademark Disputes in New York

Legal precedence when it comes to internet trademarks is lacking so it is difficult to resolve trademark disputes. In 1995, a Dispute Policy was formed in order to bring uniformity to this arena. The policy provides an administrative way for owners of trademarks to handle the domain name holders that may be causing them difficulty. There is still a lack of penalization or rules in this area, it is more of a suggestion that gives other possibilities that are not exactly the same as other trademarks.

Common law is used to resolve disputes regarding entitlement of trademarks. The goal of using common law is to prevent client confusion and unfair competition. The rules come from the federal and state courts and decisions are made in favor of the corporation or company that used the trademark first.

Let a New York City Trademark Dispute Lawyer Help

If you are dealing with any type of trademark matter it is important to know the legal precedence in your state and unique situation. New York has its own statutes in place to regulate trademarks and the regulations can be overwhelming. Team up with a skilled NYC litigation attorney from The Law Office of Steven R. Sutton to ensure that your rights are protected. We have 75 years of combined experience helping clients resolve their business issues. Call our firm today to see how we may be able to help you.