Company Using my company name

[brain357]

Today I discovered a company that is using my company name. It is selling many of the same types of products. I first discovered them on facebook where they seem to be new this year. Looking at their domain which is very similar to mine it is new this year also. I'm not so worried about them competing with me, but more worried it could damage my company name. I don't think a serious business person would take somebodies company name like this so it could be a scam to customers or just provide really bad service. So what should I do now? Think I want to complain for Trademark infringement on facebook to hopefully get them removed, what other options do I have? Should I have a legal trademark for my company name? I have never bothered, but have been in business only since 2000 so obviously have the best claim to it. My company name is also a popular search term and I am the first result.

[vangogh]

Think I want to complain for Trademark infringement on facebook to hopefully get them removed, what other options do I have?

You probably don't want to hear this, but if you haven't registered for a federal trademark then there's no infringement. In fact if the other company registers the trademark and you haven't, you're the one infringing on their trademark. If you've registered your business name in your state then no other company can use the same name for the same type of business. However, someone could use it in another state for the same business, unless you've also registered for a federal trademark. Of course a trademark in the US applies to US companies and the same name could possibly and probably be used in a different country.

[brain357]

You probably don't want to hear this, but if you haven't registered for a federal trademark then there's no infringement. In fact if the other company registers the trademark and you haven't, you're the one infringing on their trademark. If you've registered your business name in your state then no other company can use the same name for the same type of business. However, someone could use it in another state for the same business, unless you've also registered for a federal trademark. Of course a trademark in the US applies to US companies and the same name could possibly and probably be used in a different country.

So should I just go through the trademark process and worry about it after I get the federal trademark? Sounds like it takes months and will cost me some $$.

[brain357]

I found this link on the subject: Protecting My Small Business Name | LegalMatch Law Library (http://www.legalmatch.com/law-library/article/protecting-my-small-business-name.html)

When Can I Stop Another Company From Using My Name? You name does not have to be a registered trademark or service mark, and the name of the other company does not have to be identical to yours in order to stop them from using it. Similar names alone, however, may not be enough for you to bring a successful claim of infringement. In order to protect a name that is not a registered trademark or service mark, you will have to show that the businesses themselves are sufficiently similar or related in order to prove that having similar names will confuse customers. - See more at: Protecting My Small Business Name | LegalMatch Law Library (http://www.legalmatch.com/law-library/article/protecting-my-small-business-name.html#sthash.8E4Wfy9y.dpuf)

[brain357]

I'm beginning to wonder if I would get approved for my company name. It is probably what would be considered a generic term. The name is also one of the products I sell and a common product among competitors. But searching for the term shows that someone else did have it trademarked but it was cancelled for this reason:Registration cancelled because registrant did not file an acceptable declaration under Section 8. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.

It looks like the type of business had nothing to do with the actual name.

[brain357]

I don't want to share my company name, but to give an idea of what sort of name it is. It is kind of like having the company name Impact Driver which is a kind of drill and then selling many different tools including impact drivers.

[Harold Mansfield]

I think trademark filing is $275. You won't know until you try.

[BobJ275]

I don't think you will get the trademark if it's already in use somewhere. Your name, I assume, is registered in your state, and they have registered it in their state. They would have a hard time setting up shop in your state using the name and vice versa, but I don't believe you have dibs federally, but I may be wrong.

[brain357]

I don't think you will get the trademark if it's already in use somewhere. Your name, I assume, is registered in your state, and they have registered it in their state. They would have a hard time setting up shop in your state using the name and vice versa, but I don't believe you have dibs federally, but I may be wrong.

Most of the sources I have read so far make it sound like I do have dibs on the internet. I have been selling in that market for years, so he is coming into my market. I think I win on all fronts.
1. This new business is selling many of the same types of products I do and is in the same industry.
2. We are both online so it is the same market.
3. I've been doing business with company name far longer and can prove it. My business has been registered since 2000.

[brain357]

I think trademark filing is $275. You won't know until you try.

Yes. It sounds like you might up your chances of getting it by using a lawyer though. So do I add the extra cost and up the chance of getting it? Or is it all throwing money away.

[BobJ275]

Yes. It sounds like you might up your chances of getting it by using a lawyer though. So do I add the extra cost and up the chance of getting it? Or is it all throwing money away.

I'm going from memory of a small business class I took. I believe you can only trademark your business name if it is not in use in any state. Bob's auto repair of Kentucky cannot federally trademark the name if there is a Bob's auto repair in Texas. I thought I remember this being a requirement to get the trademark, but that was a while ago I took the class. You should be able to get this question answered easily by calling in to the fed.

As far as who owns a name on the internet.. well not sure on that one.

good luck.

[BizAdvisor]

For starters, I highly advise you, as I advise 8 out of 10 businesses, NOT to bother registering your company trademark. It will actually be a waste of your time and money. $275..? Rub a lamp. For the most part, a natural trademark, which automatically attaches itself when used in commerce will suffice enough for most businesses. Registering a trademark with a trademark attorney will not guarantee a successful registration. However, it will guarantee your attorney will be paid handsomely whether the registration has to be retracted or not.

And lets say you do successfully register a trademark... Now what? Are you going to litigate against someone using a similar name? What's the damage? Can you prove in a court of law that there are damages to your company due to the other company(s) in question? Boo hooing about another company somewhere else in the world that has a similar name isn't going to produce much results in a court of law without some proof of damages... Even with a registered trademark.

[Harold Mansfield]

I didn't get what kind of business it is, but is that really sound advice across the board? Say it's an online business or some kind of mobile app, or something truly proprietary. Wouldn't you want to at least try and protect the name? It's not always about damages, it's about protecting your brand. I'll bet Angry Birds didn't know ahead of time that they'd be this smashing success worldwide, but at least they took precautions just in case.

How would you feel if someone with your name started spamming the internet like it's 1995? What would you do? Just sit back and say "oh well, nothing you can do"?

Maybe the average Mom and Pop doesn't need it. But if you're getting well known across the state, across the country or across the world, why would you just ignore it and not even try to protect your brand?

[BobJ275]

I don't want to share my company name, but to give an idea of what sort of name it is. It is kind of like having the company name Impact Driver which is a kind of drill and then selling many different tools including impact drivers.

Sounds like hardware or tools or something.

[BizAdvisor]

Harold, I totally hear where you're coming from and you actually hit the nail on the head when you used a key word... BRAND. However, one should not confuse brand with company name. For example: Rovio trademarked "Angry Birds" as a brand... Not company name. The name "Angry Birds" is also trademarked by Hartz, as a brand... Not, you guessed it, a company name.

People that try to simply register a company name as a trademark are often rejected if there is no pertinent branding attached to it... Which ultimately requires the protection.

[Harold Mansfield]

Rovio is protected too. I guess I'm having a hard time with the argument that it's not a big deal. We're not talking about $20,000. We're talking about $275 to protect your name. I guess I just don't see a problem with that as if it's some huge hardship for something so important if you are in a competitive space with tons of infringement.

[Paul]

You should apply for the trademark. It’s not a big deal. Provide evidence of use going back to your original date of use. It’s not a guaranteed protection BUT it provides some leverage in a legal confrontation.
A big part of protecting a name is in your efforts to protect it. That includes a trademark. If you go to court a judge could easily say you didn’t do enough to protect the name. You should also take some action to start evidencing your concern such as a certified or attorney letter to the other party demanding they stop. The trademark office doesn’t prosecute your case, you have to defend your name yourself. The less you do the weaker your case.

[brain357]

Well this all worked out well enough. I emailed the company and got no response after a couple days. Then I filled out the trademark infringement claim on Facebook. They shut the Facebook page down quickly and then the company responded they would change their name and domain. After a couple weeks they have changed. Having used the name as long as I have in the same market gives a pretty strong claim to infringement. I asked a lawyer online who helps getting a trademark and he didn't think I could get one. My name is also a common product in market.

[Harold Mansfield]

Well this all worked out well enough. I emailed the company and got no response after a couple days. Then I filled out the trademark infringement claim on Facebook. They shut the Facebook page down quickly and then the company responded they would change their name and domain. After a couple weeks they have changed. Having used the name as long as I have in the same market gives a pretty strong claim to infringement. I asked a lawyer online who helps getting a trademark and he didn't think I could get one. My name is also a common product in market.


Awesome! I love it when a plan comes together.