If you have an online presence it is likely only a matter of time before your business receives nastygram or threatening email from somebody accusing your business of infringing on another business's trademark by copying their business name, slogan, or logo. Cease and Desist letters are ubiquitous.
If another business has the same name are you in trouble?
The short answer is, “it depends.”
It depends on:
- Whether the other business is in the same industry
- Whether the other business is in the same geographical market
- Who was using the mark first
- Who registered the trademark first.
As many legal issues turn on the circumstances surrounding the issue, so here are a few assumptions before diving into the details:
- Trademarks include slogans, logos, trade dress, business names, and so forth, you these are interchangeable in the examples below.
-Very Famous Marks play by a different set of rules so the examples below assume the marks are not famous marks.
- Your business name is a registerable/eligible trademark.
So if you receive the nastygram or cease and desist letter here are a few questions to answer first:
Does the business claiming infringement operate in the same/similar industry as your business?
A trademark's guiding principle is to avoid confusing consumers. If your business is in an industry unrelated to the other business then confusion is not likely among consumers and you are not likely to infringe. If both your business and the other business are in the same/similar industry you may have an issue.
Does the business claiming infringement operate in the same geographic market?
If your customers are in different geographical regions, there is less likely to be customer confusion because you don't have the same customers. However, the internet complicates things because if both businesses are online you may have overlapping markets.
Which business was using the business name first?
Trademark rights are established on a first-come, first-serve basis. You want to be the first business to have used the mark so that you can establish yourself as the senior rights holder. If you can provide your business started using the business name before the other guy then you are in good shape. If the other business started using the trademark first, then you may have an issue.
Who registered the business name first?
If you start using a business name first, but the other business registers it first, then you still have the right to use the name, but only in the market you were operating in at the time the other business registered the name. You have no right to expand your market into new regions. The business who federally registered the name can prevent you from using the mark in new areas.
Depending on how you answer these questions, you may be in the clear or you may have an issue. If you think you have an issue, you should talk with an intellectual property attorney on how to proceed.
Disclaimer - This post is not legal advice and I am not your attorney. I am providing you information about the law. If you’re facing a legal issue, you should consult a qualified attorney.
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