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Q: Trademark Registered for a name we have been and are currently using ( Answered 5 out of 5 stars,   1 Comment )
Subject: Trademark Registered for a name we have been and are currently using
Category: Business and Money
Asked by: max2001-ga
List Price: $100.00
Posted: 19 Sep 2005 07:38 PDT
Expires: 19 Oct 2005 07:38 PDT
Question ID: 569661
The following company names (and other information) are made up for
this question.  Any
resemblance to actual names is purely accidental.  Actual company
names may be given privately to the researcher, but should not be

In 1988 ?Automatic Bowling Company, Inc.? was incorporated in
Missouri.  In 1996 we did a web search for Pyntronix and could not
find any reference to this name.  We filed a DBA for Pyntronix, Inc.
in Missouri and got the web site  We recently decided
we should register Pyntronix as a trademark.  We did a trademark
search at
and found Pyntronix is registered twice as follows (information has
been changed):

Goods and Services	IC 035. US 100 101 102. G & S: Export-import
agencies; commercial information and directory agencies; business
research and surveys; business investigations; cost/price analysis;
business management consultation; product demonstrations. FIRST USE:
20010912. FIRST USE IN COMMERCE: 20030201
Design Search Code	xxxxx
Serial Number	xxxxx
Filing Date	August 6, 2002
Current Filing Basis	1A
Original Filing Basis	1B
Published for Opposition	March 11, 2003
Registration Number	xxxxx
Registration Date	October 26, 2004
68, Sec. 3, KingNan E. Road Taipei TAIWAN
Attorney of Record	James P. Plattery
Live/Dead Indicator	LIVE

Goods and Services	IC 042. US 100 101. G & S: Providing integrated
circuit design service, namely, register-transfer-level, logic,
circuit and layout designs, simulation, debugging, integrated circuit
place and route, and verification; providing test service of
integrated circuit for others; providing consultation service in the
field of integrated circuit design, process and testing technology;
integrated circuit design services for others, namely, design flow,
design methodology, electronic design automation tool and electronic
design automation services; providing design services for integrated
circuit manufacturing companies, namely, standard/custom cell library
design, testing program, test kit and electronic design automation
technology support; design of intellectual properties for others,
namely, computer hardware, firmware and software design for analog,
radio frequency, memory, micro controller units and input/output
interface intellectual properties. FIRST USE: 20010912. FIRST USE IN
COMMERCE: 20030201
Design Search Code	xxxxx
Serial Number	xxxxx
Filing Date	August 12, 2002
Current Filing Basis	1A
Original Filing Basis	1B
Published for Opposition	August 26, 2003
Registration Number	xxxxx
Registration Date	June 1, 2004
68, Sec. 3, KingNan E. Road Taipei TAIWAN
Attorney of Record	James P. Plattery
Live/Dead Indicator	LIVE

My questions are as follows:

Is there any legal or financial liability for us to continue going by
the name Pyntronix and Pyntronix, Inc. (note: we filed the DBA and
were using Pyntronix in 1996 before it was registered as a trademark)?
 Would we be able to trademark Pyntronix,, or Pyntronix,
Inc.?  Are there any other legal issues we should be concerned with,
like loosing our web site because Pyntronix is
Subject: Re: Trademark Registered for a name we have been and are currently using
Answered By: pafalafa-ga on 19 Sep 2005 18:02 PDT
Rated:5 out of 5 stars

Thanks for your interesting question.

Let me begin by bringing your attention to the disclaimer at the
bottom of the page -- Google Answers is not substitute for
professional legal advice.

That said, I do have some familiarity with trademark issues, and am
confident about the information I have presented below.

Please do not rate this answer if you find you still need additional
information.  Instead, post a Request for Clarification to let me know
how I can help you further, and I am at your service.




Pyntronix has some good reasons to suppose that they can keep their
business name -- and have it trademarked -- without running into major
problems.  But there are also some reasons for concern.  I will lay
these out below.

Out the outset, though, let me say that trademark issues can easily
get very muddled, and the search for a clear-cut answer to questions
like yours can be frustrating.  The very lack of clarity is the reason
why so many trademark issues end up in court -- each side believes
they have the law on their side, and they turn to the courts to make a
definitive call.

There are several key factors that are weighed in deciding trademark
issues, and these should be taken into consideration in reviewing the
Pyntronix name.

First off, one of the primary purposes for trademarks is preventing
confusion among different products and services.  If a company
trademarks a successful business name -- say Hertz car rentals -- and
another car rental company names itself Hurtz car rental, then the
opportunity for confusion is obvious, and Hertz would have a very
legitimate claim that their trademark has been infringed.

However, if a company starts up as Hurtz plumbing supplies, then there
is far less opportunity for confusion, and an infringement claim would
have much less merit.  Even the name Hertz plumbing supply would
probably be acceptable.

Take a look in the business listings of your local phone book under
AAA...I bet you'll see lots of businesses with this name, even though
the popular trademark belongs to the Automobile Association of
America. However, none of these businesses are likely to be
auto-related, since that would raise the likelihood of confusion.

Since Pyntronix was taken as the name of a bowling-related business,
the chance of confusing it with the other trademarked Pyntronix's -- a
business analysis firm, and an integrated circuits designer -- seem
slim.  There's a good possibility that a bowling-related use of
Pyntronix could be trademarked, in addition to the two trademarked
uses that already exist.

Put this factor in the PLUS column, as a factor in favor of Pyntronix
keeping its name, without the likelihood of being successfully
challenged over its use.

Another factor strongly favoring Pyntronix is the fact that no other
uses of the name showed up in the original websearch in 1998 (is this
still the case?  If you haven't checked already, you certainly

Trademarks are intended to cover real products and services, and can
lose their protective aspects if the trademarked terms fall into
disuse.  If none of the other Pyntronix's have a presence on the web
or in print in terms of using the name, then this bodes well for the
bowling-related use of the term.

The US Patent Office seems quite fond of Lexis-Nexis searches as
evidence of the use (or not) of a particular term.  If you haven't
conducted such a search, you may want to give it a try.  Lexis-Nexis
is fee-based service, but public libraries sometimes have it
available.  You can also sign up for a one-time search at their

By the way, as you conduct these searches for any other Pyntronix's,
you should certainly be taking note of how often the name shows up in
the context of your use of it for bowling-related business.

On the other hand, different types of terms are subject to different
levels of legal protection.  'Apple' gets a relatively weak level of
trademark protection, since 'apple' is a common word with many uses. 
A term like 'Kodak' gets a much stronger level of protection, since it
is an invented word that applies to only one thing.

'Pyntronix' certainly seems to fall closer to the latter category, and
if use of the name were challenged in court, the court would certainly
take into account the relative uniqueness of the word.  However, the
word is also an amalgamation of a common word -- pin -- and a common
prefix, so it may not warrant the same level of legal protection as a
totally unique term like 'Kodak'.

Still, this one goes in the MINUS column.

There's also history to consider.  Pyntronix has been using its
bowling-related name since 1988 and its usage in this context is
presumably well-established.  We don't know the history of the other
uses of the term, but there is something of a first-come-first-served
factor at work here.  If the other uses only came into being circa
2002 (when they were trademarked), then this is a PLUS.

However, they filed for trademark, and you didn't...that's a MINUS.

One more thing to consider is geographical coverage.  I don't know if
any of the Pyntronix's are national level businesses, or basically
local services, but this does make a difference.  If you operate only
in Missouri, and the other firms operate local businesses in Oregon
and New Jersey respectively, then never the Pyntronix twain shall
meet, and there shouldn't be much likelihood of a problem.

This is a NEUTRAL factor, until you find out more about the geographical coverage.

A good site for some quick overview of trademarks and the relevant law is this one:

In particular, the four "Trademark Topics" -- What Is A Mark? How Are
Marks Acquired? How Are Marks Protected How Should Marks Be Used? --
are good places to get started if you want some additional background.

Like I said, it's not an especially clear-cut topic, but I hope this
background has helped to at least identify the factors to consider.

Again, if there's anything else I can do for you, don't hesitate to let me know.

All the best,


Search strategy -- used my own knowledge of this field, combined with
some bookmarked sites.

Clarification of Answer by pafalafa-ga on 20 Sep 2005 11:24 PDT

Given the nature of your question, I thought this article in today's
news would be of interest:
Bricklin will not use "Chery" name in US

DETROIT (Reuters) - Visionary Vehicles founder Malcolm Bricklin said
on Tuesday that he will not market cars from Chinese automaker Chery
Automobile Co. in the United States under the Chery name because of
objections from General Motors Corp.
GM has threatened legal action if Bricklin uses the brand name "Chery"
to bring in Chinese-made cars and trucks to the U.S. market. The
world's largest automaker says that "Chery" sounds too similar to its
"Chevy" brand, short for Chevrolet.

"They win," Bricklin said at the Reuters Autos Summit in Detroit....

Request for Answer Clarification by max2001-ga on 20 Sep 2005 11:28 PDT
Thank you,  you did a good job of researching the questions and
provided useful information.  It appears the questions cannot be
answered definitively without getting  a lawyer and actually filing. 
In your opinion, where should I go from here?  Should I look for a law
firm in Missouri that specializes in trademarks (or at least has one
person that handles trademarks on a regular basis) or should I go with
one of the low cost sponsored links that come up when you do a Google
search on ?Trademark? (does lower cost equate to lower value)?

Clarification of Answer by pafalafa-ga on 20 Sep 2005 12:15 PDT

I'm glad to hear the information I provided was useful, even if less
definitive than might be desirable....I wish it could be otherwise.

I have no direct experience with either trademark attorneys or the
internet services that pop-up.  I do know that some attorneys, at
least, offer an initial consultation at no charge -- it may be worth
while seeking one out in your area who offers this.

Also, applying for a trademark with the federal Trademark office is a
relatively manageable process (compared to patents, say, which are a
nightmare).  If you're intent on applying anyway, you might want to
try it on your own.  A 'getting started' page can be found here:

Lastly, the US Small Business Administration is often a good place to
turn to for advice on these sorts of questions.  Here's a link to
their St Louis office:
St. Louis District Office
200 North Broadway, Suite 1500
St. Louis, MO 63102
Phone: (314)539-6600 
Fax: (314)539-3785 

In my experience, they are generally staffed with folk who have
walked-the-walk, have a very good knowledge base, and a willingness to
help.  It can't hurt to give them a call.

Let me know if there's anything else I can do for you.  Best of luck.

max2001-ga rated this answer:5 out of 5 stars and gave an additional tip of: $10.00

Subject: Re: Trademark Registered for a name we have been and are currently using
From: pafalafa-ga on 20 Sep 2005 12:34 PDT
Thanks very much.   Hope it all goes smoothly.


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