max2001-ga,
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.
Cheers,
pafalafa-ga
===============
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
should).
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
website:
http://w3.lexis.com/lne/login_en.asp?referer_domain=LNE001
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:
http://www.ggmark.com/
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,
pafalafa-ga
Search strategy -- used my own knowledge of this field, combined with
some bookmarked sites. |
