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joann
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tradenames question

Customer Question

I have been using the word "nomad" in my company name for the last 6 years. We filed a ficticious name with the state of FL "Nomad Golf WRX". We do not use any word in our company name anywhere other than on business cards and our domain name on the internet. Over a year ago, someone in CA bought a business and similar to our industry, which is golf but they make clubs and put their tradename "nomad" on the golf clubs. Our company repairs and customizes golf clubs and we do not place anything on the clubs we repair or customize. The company in CA hired an attorney to write us and ask us to stop using the tradename they have registered "nomad" in our company name. Do we have to stop using it even though it is not the same company name? There are thousands of companies out there using the word "nomad" in their company name. Will the attorney write to all of them to get them to stop using the word "nomad" in their company name? Does this apply only to companies that use "nomad" in their company name and work in the golf industry? Thanks for your help.
Submitted: 11 years ago.
Category: Legal
Expert:  joann replied 11 years ago.

This is florida state law on fictious names

There is a common misconception that registration of a fictitious name assures the registrant of exclusive rights to the name. The new law clearly states that registration is for public notice only, registration does not give rise to any presumption of the registrant's rights to own or use the name registered, and registration does not affect trademark, service mark, trade name, or corporate name rights previously acquired by others in the same or similar name. F.S.A. § 865.09(8). Registration itself does not grant any trademark or other proprietary rights in the name. (However, note that F.S.A. §§(NNN) NNN-NNNNand(NNN) NNN-NNNNrequire that names of corporations be distinguishable from the names of all entities or filings registered and on file with the Division of Corporations.)

http://www.jamesmartinpa.com/flfict.htm
Customer: replied 11 years ago.
Reply to joann's Post: I appreciate your time in attempting to answer my question. However, the answer does not address my question regarding tradename use. Can I use the word " nomad " in my company name as I have an established business for the last 6 years using that word in my company name.
Thanks
Expert:  joann replied 11 years ago.
When and how to stop others from infringing on or diluting your trademark.




As the owner of a trademark, when you can stop others from using your trademark, or a confusingly similar one, depends on such factors as:

whether the trademark is being used on competing goods or services (goods or services compete if the sale of one is likely to affect the sale of the other)
whether consumers would likely be confused by the dual use of the trademark, and
whether the trademark is being used in the same part of the country or is being used on related goods (goods that will likely be noticed by the same customers, even if they don't compete with each other).
In addition, under federal and state laws known as antidilution statutes, you may go to court to prevent your trademark from being used by someone else if the mark is famous and the other company's use would dilute the mark's strength -- that is, weaken its reputation for quality (called tarnishment) or render it common through overuse in different contexts (called weakening).

Antidilution statutes can apply even if there is no way customers would be likely to confuse the source of the goods or services with those sold by the owner of the famous mark. For instance, consumers would not think that Microsoft Bakery is associated with Microsoft, the software company, but Microsoft Bakery could still be forced to choose another name under federal and state anti-dilution laws.

However, a business that claims to own a trademark cannot stop others from using the same or a similar trademark unless it is actively using the trademark.

Using a Trademark Actively
In trademark law, "using" a trademark means putting it to work in the marketplace to identify goods or services. This doesn't mean that the product or service actually has to be sold, as long as it is legitimately offered to the public under the trademark in question.

For example, Robert creates a website where he offers his new invention -- a humane mousetrap -- for sale under the trademark "MiceFree." Even if Robert doesn't sell any traps, he is still "using" the trademark as long as "MiceFree" appears on the traps or on tags attached to them and the traps are ready to be shipped when a sale is made.

Similarly, if Kristin, a probate attorney, puts up a website to offer her services under the service mark Probate Queen, her service mark will be in use as long as she is ready to respond to customer requests for her advice.

Trademark Notices: ® or TM?
The "R" in a circle (®) notice should accompany a trademark after it has been registered with the U.S. Patent and Trademark Office (USPTO). Failure to put the notice on a registered trademark can greatly reduce the possibility of recovering significant damages if it later becomes necessary to file a lawsuit against an infringer. The ® symbol may not be put on a mark unless it has been registered with the USPTO.

Many people like to put a "TM" (or "SM" for service mark) next to their trademark or service mark to let the world know that they are claiming ownership of it. However, it is not legally necessary to provide this type of notice; the use of the trademark or service mark itself is the act that confers ownership.



Reserving a Trademark for Future Use
If you like a certain phrase or logo but you aren't ready to use it, you may be able to reserve it for future use, which keeps someone else from taking it.

You can acquire rights to the trademark by filing an "intent-to-use" (ITU) trademark registration application with the U.S. Patent and Trademark Office (USPTO) as long as someone else hasn't actually started using the trademark. However, even if you file an intent-to-use trademark application, the mark will not actually be registered until it is used in commerce.

The filing date of the ITU application will be considered the date you first use the trademark, as long as you actually use the mark within the required time limits -- six months to three years after the USPTO approves the trademark, depending on whether the applicant seeks and pays for extensions of time.

For more information about trademark registration, see the Filing a Federal Trademark Application FAQ.

How to Stop Others From Using a Trademark
Typically, you begin by sending a letter, called a "cease and desist letter," to the wrongful ("infringing") user, demanding that it stop using the mark.

If the wrongful user continues to infringe the mark, you can file a lawsuit to stop the improper use. The lawsuit is usually filed in federal court if the mark is used in more than one state or country, and in state court if the dispute is between purely local marks.

In addition to preventing further use of the mark, you can sometimes obtain money damages from the wrongful user.

Damages for Trademark Infringement
If you can prove in federal court that the infringing use is likely to confuse consumers and that the business has suffered economically as a result of the infringement, the infringer may have to pay you money damages based on the loss.

If the court finds that the infringer intentionally copied your trademark, or at least should have known about the existing trademark, the infringer may have to give up the profits it made by using the mark as well as pay other damages, such as punitive damages, fines or attorney fees.

On the other hand, if your business has not been damaged, a court has discretion to allow the other company to continue to use the trademark under limited circumstances that are designed to avoid consumer confusion.

http://www.nolo.com/article.cfm/catId/D8932879-DC34-43DF-BF65FC92D55FEE5D/objectId/82AB4042-68AE-4043-B656554BB65C561F/3 10/274/ART/
I hope this helps!

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