QUESTION

What can I do if another company is using a name that is similar to my current one?

Asked on Jan 03rd, 2012 on Patents - Iowa
More details to this question:
I have a LLC Business established in CT in 1997. In 2001, someone registered a similar business with nearly the same name. My company is [Company name] Theirs is [Company name]. Same name without the word service. I never even knew they existed until they started advertising where we do and some of my customers used them by mistake, and then Called my cell phone to complain about poor service. The problem is we have always gone by this company name and our customers for the most part don't realize service is in our name. Even our website is [company name.com]. (I don't think they have a website yet but I am not sure) I suspect there is little or nothing I can do first because they registered with the state in 2001. Three years after me, but 10 years ago. If I trademark this name can I keep them from using it? I have no idea if they took the name so close to mine on purpose at the time, they are defiantly riding our coat tails at this time, and damaging my reputation. They have to be aware they are advertising where we established our business, and using the name we go by, but legally it may be me who is wrongly using the name because I wasn't careful enough to register it and trade mark it when we began using it. Thank you for any advice you can offer, interested in representation if you work in CT and think there is a way to secure the name at this time.
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1 ANSWER

Patent Application Attorney serving Des Moines, IA at Law Offices of Brett J. Trout, P.C.
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It would be unethical to provide specific legal advice over the internet, but I can provide you with general trademark law information, which may or may not apply to your specific situation and/or jurisdiction. With trademarks, it is extremely important to determine who used the trademark first in a particular area. A federal trademark registration, as opposed to a state registration, gives you constructive use throughout the country. Without a federal registration, you have to look and see where and when you can establish actual trademark use. If the other side has priority of use in a market in which you had not previously established either constructive or actual use, they may have trademark rights superior to yours in that geographic area. It may be the case where you both have concurrent exclusive trademark rights in your own area. If there is indeed evidence of actual confusion between the trademarks among the public, it may be that one of you has expanded into the other's area and the entity owning the rights in that area can ask a court to kick the other one out. There are many factors that come into play that determine the ownership and geographic market associated with trademarks. Any one of these factors could swing the upper hand in favor of you or your competitor. You would have to speak with an attorney to find out how the foregoing applies to the specific facts of your case. Another thing to consider is the name itself. Something like "Home Cleaning Service" is too generic to merit exclusive trademark protection. Basically, any word or phrase a competitor would generally use to describe the services is not capable of becoming a trademark. This could certainly come into play if the name of your company is generic or descriptive. The addition of the word "Services" is generally not a significant factor either way in determining the issue of trademark rights and infringement. Be advised, that the longer you wait to protect your trademark, the more your rights are subject to being lost or attenuated. If there are still markets neither one of your has penetrated, the first one into that market may gain exclusive control there. Also, the longer you wait, the more likely any rights or damages you may otherwise have been entitled to are subject to loss or diminishment because of your inaction. I wish I could be of more help, but without knowing more of the facts, no trademark attorney would be able to give you a definitive answer to your question.
Answered on Jan 06th, 2012 at 3:21 PM

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