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Roger
Roger, Attorney
Category: Business Law
Satisfied Customers: 26335
Experience:  BV Rated by Martindale-Hubbell; SuperLawyer rating by West
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I am a small business (one person shop S-Corp in California).

Customer Question

I am a small business (one person shop S-Corp in California). I received an email by another business that recently changed their name to my exact business name. Their business is located in another country, but they asked to meet with me to discuss a partnership to "expand" their business both in the US and globally. They are a 10+ person shop and are marketing the same services (advertising, design, marketing). Their website name is XXXXX XXXXX similar. I'm concerned potential clients could confuse my company with theirs. I haven't registered for a trademark, but have been in business for over 10 years with that name. What are my options in this situation? And, how should I respond to their email, as they want to meet with me? Thank you!
Submitted: 1 year ago.
Category: Business Law
Expert:  Roger replied 1 year ago.
Hi - my name is XXXXX XXXXX I'm a Business litigation attorney. Thanks for your question.

As a practical matter, you are under no obligation to meet with them. Also, it doesn't matter that you haven't' filed a trademark with the US Patent and Trademark Office. You have a common law trademark to your name/design that protects you in your local service area. Thus, they should not be able to come into your area and then try to make you stop using your name. Instead, you would likely have the right to request the other company to stop infringing on your common law trademark. Here's a link that discusses common law rights: http://www.uspto.gov/faq/trademarks.jsp#_Toc275426712

Also, if you want protection under federal law, you can register your trademark with the USPTO. Also, you can seek international protection under the Madrid Protocol (after you register with the USPTO. Here's a link that outlines the process for international protection: http://www.uspto.gov/trademarks/law/madrid/madridfaqs.jsp#q2

If this company were to come into your market, you would have a right to sue to stop the infringement, but only within the US unless you go through the registration process as outlined above.

If you're interested in the business opportunity, you may want to meet with them, but if you're not, you may simply want to respond that you're not interested and kindly ask them to refrain from infringing on your trademark and customer base.

I hope this answers your question, but if you have others, please REPLY and I'll be glad to respond. Thanks.
Roger, Attorney
Category: Business Law
Satisfied Customers: 26335
Experience: BV Rated by Martindale-Hubbell; SuperLawyer rating by West
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Customer: replied 1 year ago.

Hello Kirk,


 


Thank you so much!


 


I'll move forward with trademarking my company. In the event they have already trademarked the name, but I've been in business longer and have the proper paperwork to verify, would my trademark override theirs? How does this process work or what should I expect?


 


Also, you mentioned, "sue to stop the infringement". How would I go about monitoring or proving they are infringing? I'm a small business relative to theirs. Could they possibly drag this on and cause me more grievance than it's worth suing for, or is it a straightforward process?


 


Thank you again for your advice.

Expert:  Roger replied 1 year ago.
Hi - the rule is first in time, first in right. Thus, if you have been using the trademark longer than them, that's really all that matters.

As I said earlier, common law copyrights are valid, and really provide the same rights as a registered copyright. The only major difference is if you are registered, you can file suit in Federal Court instead of State Court, and you avail yourself to all of the protections under federal law -- which is better than if you're just common law.


As for their infringing upon you, there's really no specific way to tell whether or not they're infringing on you. Instead, you'd really find out by customers telling you, or you finding advertisement that cloaks your own. As for costs, if you're registered and go through federal court, the process is usually shorter and easier to navigate through. However, it is certainly possible for the other company to try and spend you to death and make you give up your claim - - that certainly happens.
Customer: replied 1 year ago.

Great! Thanks again and have a nice evening!

Expert:  Roger replied 1 year ago.
Thanks. You too!

Also, please let me know if you have any additional questions.

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