Anybody a lawyer...I need some advice.

Canon 12x IS USM (S3 IS built-in Lens) -- 36-432mm (35mm EQ)

02/05/2008 06:42:57 PM · #26

Want me and Guido to look this guy up next time I'm going up to Seattle?

GeneralE

Canon PowerShot S3 IS

02/05/2008 06:44:25 PM · #27

Here is some someinformation and resources on trademark law.

US Patent & Trademark Office

You may be able to get more information from the Washington State Secretary of State's office -- they usually control business names when the issue is statewide, and not just within a county.

njsabs

02/05/2008 06:45:54 PM · #28

Want me and Guido to look this guy up next time I'm going up to Seattle?

Yes....Guido is a frightful looking character. LOL ;O)

Canon EF 28-135mm f/3.5-5.6 IS USM

02/05/2008 06:46:04 PM · #29

So many lawyers with such interesting analyses of the law...

From an international common law perspective (I am a lawyer in the UK and do get involved with IP/trademark matters) the matter is wider than trademark. He could have a trademark - the fact that it is his name is irrelevant - in fact that is easier to register than an improper noun. The real issue here appears to be "passing off" - if you have a name that is confusingly similar and benefit from his reputation or damage his reputation, then he might have a claim. Depending on all the facts, this could be the case here.

The US does have quirks bith nationally and on a state level, so unfortunately if he gets serious and you want to dig your heels in, you'll have to research the facts, find some evidence, and take them to a local lawyer for an assessment.

Before you start looking at the legal route you should think very carefully - there are a number of potentially far less expensive routes. First is to have a civil conversation with him and see whether you can work things out. If you cannot do this, then consider trying to agree to go through mediation or agreeing to a single independent expert's determination. Finally weigh up the cost of the legal advice and any litigation against the cost of changing your name - a rational analysis might save you a lot of money and stress!

Good luck.

Matthew

TCGuru

Canon EOS-40D

02/05/2008 06:52:38 PM · #30

Originally posted by njsabs2323:

I have filed for a DBA in the state of California. Does that cover me? Also the small city that I live in does not require a business lincense, so I have not filed in my current city. Do I need to file for a DBA in the state of Washington as well?

If you are doing business in the state of Washington, yes, you do. It is a tax thing. You also need to notify California that you have moved.

Donna21

Fujifilm FinePix S9000

02/05/2008 06:55:53 PM · #31

Disclaimer - I'm not a lawyer, just have some background in TMs.

The USPTO only registers TMs used in interstate or international commerce. If he's not doing business outside WA, then he's not registerable. Also, he would probably have some issues at first since the "primarily a surname" issue might come up for him.

If you are doing business in both WA and CA, you are eligible for Federal (USPTO) registration (and the R in a circle, not just a TM or SM, after your name). But there are other rules as well - you should check them out at the USPTO site already given.

You should take a look at anyother art/photography-related marks on their database that incorporate the word "Bliss" in the name. The name doesn't have to be an exact match, just cause confusion. And that includes the type of product/service offered as well as the name. For example, if someone sold cheesecakes called "Just Bliss" no biggee, but if someone provided another service for your clientele (expectant mothers and children) under the name "Just Bliss" it could mean that you are infringing on their TM.

Think about it from the consumer's point of view - if you take you baby to "Just Bliss" daycare and then hear of a photography studio by the same name that specializes in babies, would you make a connection? What if the daycare was Little Bliss? Basically whoever has the lawyer w/ the better argument (and case law to back him up) will win that.

Again - the USPTO only registers marks - there are no TM police, they do check that it's not "confusingly similar" to other marks currently registered, but that's it.

Nikon AF Nikkor 50mm f/1.8D

02/05/2008 07:18:37 PM · #32

Just a quick follow up to note that you should ignore about 90% of the people posting their opinions here (not wishing to mention names) - it really can be a case of a little knowledge being very misleading.

frisca

Nikon D70

02/05/2008 07:20:28 PM · #33

if you feel concerned or menaced, you should speak with a lawyer who has some experience in intellectual property law.

Prof_Fate

02/05/2008 07:22:00 PM · #34

Every state varies on how things are handled. Here in PA he can be Thomas Bliss photography and need not register it all. You would have to register Just Bliss Photography - the first is his name, yours is a 'doing business as'.

Since you have not registered your name, your not operating legally and don't have a leg to stand on at the moment.

Who sent the letter - him or his lawyer?

As a business owner you should have a lawyer of your own - it's a cost of doing business like taxes, utilities and rent. Generally he with the best lawyer wins, and in this case you're coming unarmed to the fight so you're gonna lose.

Free advice from across the US and the world means not a damned thing to you - none of us are lawyers, know the law in your state, or have a clue about what this fellow's registered or not, etc.

And every lawyer will interpret things differently until a judge really decides it. Reality is probably a settlement out of court - change your name, unless you have a better lawyer (aka bigger bankroll) then make him pay you to change your name :D

Patents4u

Canon EOS-40D

02/05/2008 07:31:33 PM · #35

Originally posted by Matthew:

90% is a bit low....and not very helpful if you don't tell her which posts are in the 90%!! :-) I haven't read all the posts, but, from what I've seen, those from Matthew and Donna21 are worth reading again (i.e. probably not in the 90% noted).

I am an IP attorney. I'll try to PM you later after I have a few moments to review your posts.

Edit to add Gordon's post is worth reading and the website he quoted has a decent summary of certain aspects of trademark law in the US.

Message edited by author 2008-02-05 19:57:27.

02/05/2008 07:43:54 PM · #36

Originally posted by Prof_Fate:

Free advice from across the US and the world means not a damned thing to you - none of us are lawyers, know the law in your state, or have a clue about what this fellow's registered or not, etc.

I don't agree completely - local state law is important for the fine detail and obtaining detailed advice or representation, but any lawyer worth his salt should be able to give a basic analysis of this fact pattern and give some general advice (like I did a bit earlier - I am a lawyer).

robs

Canon EOS R6 Mk II

02/05/2008 08:04:04 PM · #37

You know... This is not something to stuff around with or listen to solicitors :-) or others with an opinion.... there are some things that you should not do yourself. Law is sometimes so far from common-sense that you just need to pony up some $ to someone registered in the state/s with some real knowledge.

Prof_Fate

02/05/2008 08:06:39 PM · #38

Originally posted by Matthew:

Originally posted by Prof_Fate:
Free advice from across the US and the world means not a damned thing to you - none of us are lawyers, know the law in your state, or have a clue about what this fellow's registered or not, etc.

I don't agree completely - local state law is important for the fine detail and obtaining detailed advice or representation, but any lawyer worth his salt should be able to give a basic analysis of this fact pattern and give some general advice (like I did a bit earlier - I am a lawyer).

Many things vary by state, and many are not logical. Type of state (commonwealth or whatever) will make a difference as well.
Deposit or retainer?
To register a DBA in PA, what do you do? State wide or by county?
Do you need a business license?
LLC for a married person? Is it worth it?
If I sue you at the magistrate level and win, what did I win?

(in PA a deposit is by law always refundable. so it's retainer for wedding 'deposits'. But I have had different opnions on this from different lawyers - based on their own personal/professional experience. So who's advice do I follow?)
(DBA is a statewide thing, but you have to advertise in the legal notice section of your local county paper of record)
(business license is by local municipality, except for some things (tobacco, guns, hair salons, real estate, car sales etc)
(LLC is a waste of money in most cases. In PA a married couple is like a corporation - so you can sue me but you can't take any joint property - so I'm protected anyway. So says my lawyer and my CPA)
(you can appeal the magistrates ruling - no matter what. I can win again, and you can appeal to court of common pleas (state court here) - no matter what. The cost to get that far and have your day in court will be about $500. And if your right you will win. But then you have to collect. Unless it's a lot of money, it's usually not financially sensible to sue even if you're right)

IMO, if your giving free legal advice to a stranger, with out all the details of the case, then your level of professionalism is suspect IMO. I've seen CPA's and accountants when offering tax advice hedge their answers a lot more than you have on this issue.

I still stand by my statement - free advice is worth exactly what you pay for it. She needs to find a lawyer local to her and have a sit down. The $50 or so it will cost is a lot less than having her business ceased and desisted (are those even words?
Reality again - cost is how everything works. She can probably keep the name, but it will cost her in time and money. Is it worth it? Find a local lawyer and ask!

Message edited by author 2008-02-05 20:09:14.

Canon EF 28-135mm f/3.5-5.6 IS USM

02/05/2008 08:23:21 PM · #39

Originally posted by Prof_Fate:

Deposit or retainer?
To register a DBA in PA, what do you do? State wide or by county?
LLC for a married person? Is it worth it?
If I sue you at the magistrate level and win, what did I win?

...

I agree - fine detail requires local advice. General advice, especially for something like IP which is heavily bound by international treaties, is not so specific.

The real value you get from a lawyer is not specific advice on specific national law but an overall analysis of a situation, a preliminary assessment of what are the key facts and their likely construction. I work on an international basis very regularly - my value is not in my specific knowledge of local law, but in the ability to know what the likely issues are and when to call in local specialists.

Originally posted by Prof_Fate:

IMO, if your giving free legal advice to a stranger, with out all the details of the case, then your level of professionalism is suspect IMO. I've seen CPA's and accountants when offering tax advice hedge their answers a lot more than you have on this issue.

Yup - hedging advice betrays a certain lack of confidence or competence. I know 100% that I cannot be sued successfully for what I have written in this context - the general advice on managing a claim is accurate and I have specifically recommended the point at which local specialist advice is required. Hedging belies an uncertainty of one kind or another and is unhelpful - I have given useful advice to the appropriate limits without being ham fisted with disclaimers.

Message edited by author 2008-02-05 20:24:15.

Hye5

Canon EOS-5D

02/05/2008 10:07:48 PM · #40

I have handled an occasional trademark case here in California and I can tell you this for certain:

If your trade name is important to you, your best bet is to speak to an attorney in Washington who is familiar with this area. To get an accurate legal assessment, you really need to lay out all of the facts and details. The information you have received here, while interesting and potentially useful, should not be relied on in place of retained legal advice, especially since no one here has all the relevant information.

I can tell you this, whether or not he will succeed in his claim is irrelevant. If he chooses to push the issue, be prepared to spend a good deal of time and money before the matter is resolved.

Chuck

DrAchoo

Panasonic Lumix DMC-LX5

02/05/2008 10:10:11 PM · #41

Originally posted by Prof_Fate:

The $50 or so it will cost is a lot less than having her business ceased and desisted (are those even words?

$50?!? I thought that was how much it cost to park in their lot... ;)

Gordon

RIM BlackBerry Curve

Canon EF 85mm f/1.8 USM

02/05/2008 10:44:45 PM · #42

Originally posted by DrAchoo:

Originally posted by Prof_Fate:
The $50 or so it will cost is a lot less than having her business ceased and desisted (are those even words?

$50?!? I thought that was how much it cost to park in their lot... ;)

A doctor complaining about lawyers fees. Is this some sort of standard joke template ?

DrAchoo

Panasonic Lumix DMC-LX5