An interesting email came across my blackberry ( yes I am a proud Canadian and have my “zed” 10) the other day. A CEO asked me why we were using InnovaPrep with a TM on our consulting website when his company InnovaPrep had been using it for many years. So good question.
A bit of background : Traklight had a small consulting arm that was recently reborn as a customer lab for creation of our Enterprise Innovation Program. There is a separate website at innovaproconsulting.com.
In the past life we offered a quick consulting session that was like a prep course so we names it InnovaPrep and added it to the website. Unfortunately it now seems that the google search for the same name did not take place. I do recall a check on the USPTO that showed nothing filed to register the TM for InnovaPrep. Clearly that was not enough checking. Traklight’s ID our IP tells us that a google search is mandatory!
The notion of a trademark is to avoid customer confusion. If someone is looking for consulting around innovation and googled InnovaPrep they would find both our consulting website and of course InnovaPrep.com (their URL).
The other company does not do innovation consulting. They are in the biological sample collection and concentration business. That should not confuse the general public.
So were we infringing?
Technically I do not think so because no one would mistake the two different services. Biological sample collection and related services are way outside my comfort zone!
InnovaPrep has not federally trademarked the name but they have common law trademark by using it in for many years. If we were in the same industry and providing the same services, we would likely be infringing…but because they asked very nicely and we are not moving forward with the InnovaPrep offering, we took it off our site.
Now if only the folks sitting on tracklight.com (traklight with a c) would be as accomodating!
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