Wow, now I have an interest in this subject

[Frog]

I just got an email from a company in New Zealand with the same name as mine.
They trademarked their name in 2000 and want to defend against those of us "riding the coattails of their success"
I have been operating and registered with the county since 1988. No trademark.

Turns out that they aren't even in the same business exactly, as they are strictly digital photo products.

[bulldog]

They trademarked their name in the US?

Isn't there something along the lines of fair use in trademark law that if you can prove you were operating/selling first under that name that even if they do trademark it that you're basically exempt?

[royster13]

They trademarked their name in the US?

Isn't there something along the lines of fair use in trademark law that if you can prove you were operating/selling first under that name that even if they do trademark it that you're basically exempt?

Yes 1st use in commerce wins.....

[screenxpress]

Tell em to bring a big bag of money. 

In the meantime, just some quick surfing got these -

http://www.tcuprintcopy.com/

http://www.frogprints.co.nz/services/digitalprice.cfm - bretheren in Australia

[mimosatexas]

Unless you share markets they can't force you to change your name, even if they have it trademarked, especially after more than 25 years.  There are thousands of businesses across the country/world that share names and are in similar or even the same industries, and unless their markets overlap they have no standing to sue.  I had a client just go through this who fought a cease and desist without much hassle as he did not sell in California where the other business was located.  Exact same types of businesses and almost identical names.

[screenxpress]

I hazard even checking how many screenxpresses there are, lol.

[Inkworks]

I say double check that they have no leg to stand on with someone versed in such things, then tell them you are not only going to carry on as Frogprints, but that you are going to expand your use of the name and if they don't like it, they can pound sand.

[screenxpress]

SOAB, there are screenxpresses everywhere.

And I didn't even make the cut, lol.

[Gilligan]

They trademarked their name in the US?

Isn't there something along the lines of fair use in trademark law that if you can prove you were operating/selling first under that name that even if they do trademark it that you're basically exempt?

Yes 1st use in commerce wins.....

You would think.

We trademarked (state wide) "Hillbilly Wineglass" just as a precaution.  Well about a year later we get a CnD and we are like "what?, we looked!"  Look a bit more and this person has only APPLIED for the federal... Well, now she has pissed the wife off.  So she contest the application and shows them that we were already using the name and even had it trademarked at the state level.  Feds came back and said, too bad, fed trumps federal and you can't contest it!

So basically "go f*ck yourself"

[Shanarchy]

I would send them an email saying you've been in business under this name since 1988 and requesting that they immediately stop the use of their name as you are trying to prevent those who are riding of the coattails of your success.

[Croft]

I have a Canadian customer that had the same name as a large US clothing retailer, they ( US retailer) took him to court to change his name but he was registered years before them. Basically the US company lost and it back fired they payed millions for the loss and millions for him to adjust his name a bit. This was a first in commerce situation.

[TCT]

I'll have to check when I get to work today, but I could of swore there is a new franchise here offering DTG that is called Frog Prints! 

[Frog]

A second email emphasizes his concern now with my website using "their" name, more than my company itself sharing monikers.

I believe that they are not even realistically concerned with me getting any of their photographic print business, but rather merely rigorously defending their "trademark", as we've been taught is necessary.
Nevertheless, something seems wacko when a company can (knowingly or not) start a website-based business using an established brick and mortar-based business' name, and now block the older business from using their own name on their site a few years later.

 

[Gilligan]

[Frog]

Apparently not as they are in New Zealand