QUESTION
Trademark issues with a company who uses an alternate name which comflicts with our Federal Trademark
Asked on Sep 25th, 2013 on Business Law - New Jersey
More details to this question:
I own the Federal Trademark "National Sportswear" filed under SIC 25 and SIC 40. It is also filled under a section 8 and 15 as non contestable. The person using it, claims he has been using it since 1947 which is not so. After research we found that the State of New Jersey had him registered since 1991 and in 2007 revoked him for not paying his taxes and maintaining it. It was never renewed, however he is continuing to use the name and even has gone so far as pretended to be us with one of our clients to try to steal the business from us. He is located in New Jersey and his main business registered as Red Diamond Co. We are registered in New Jersey as National Sportswear Inc an "s" corporation (foreign) and since, we also added ourselves as an alternate name National Sportswear, just to do what we can to stop this. He did receive a letter of seize and desist and ignored it and immediately tried to Trademark a similar name without success. The Trademark Office denied him.
1 ANSWER
He is engaging in unfair competition. You can sue him for damages and to enjoin him from continuing. There is a long line of NJ cases on this issue. File Order to Show Cause, Verified Complaint and seek temporary restraining order (TRO) to stop him, going forward. Also seek damages in the complaint. Your customer that he tried to pirate will be a good witness as will the denilal by the Trademark Office be good evidence of the likeliehood of success that you will need to establish to get the TRO.
Answered on Oct 01st, 2013 at 4:17 PM