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Law Educator, Esq.
Law Educator, Esq., Attorney
Category: Business Law
Satisfied Customers: 118809
Experience:  All corporate law, including non-profits and charitable fraternal organizations.
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To make the story short. The name of my company is Prime

Customer Question

Hello. To make the story short.The name of my company is Prime Edit Post Production which got registered in the TM office a month ago. However, another company with a similar name "Prime Edits" that got their TM registered 6 months ago sent us a cease and decease letter.
---I hired a lawyer and he's helping me with the case. After some back and forth we came up to leave " Prime Post Production" as the name of our company . However they REFUSE to "let us" do that. So the lawyer told me that we can continue the process and the trademark office might or might not approve . So he said we have two options, continue with the process to se what the TM office says or just change the name completely. I lean towards keeping the word prime because they do not own the word "PRIME" itself. No matter if its in the same business. What do you think?
I see a lot of businesses listed with the word Prime in them and some of them are in the same business
Submitted: 1 year ago.
Category: Business Law
Expert:  Law Educator, Esq. replied 1 year ago.
Thank you for your question. I look forward to working with you to provide you the information you are seeking for educational purposes only.
This is not something that is uncommon, but the good news is that under the Landham Act (trademark law) the registration of the mark is only presumptive evidence of ownership and if a party can prove first use in commerce of the mark, they can defeat the registration claims. You have a common law trademark by using the mark in commerce since before the new company came along and as such you now have to respond to their cease and desist informing them the date you began operations and that your use in commerce has given you common law trademark rights and the right to continue to use the mark.
However, if they can show they were using the mark before you did, then there is a problem. Yes there are many companies using similar names, but the test used is whether or not your name would be "causing a likelihood of confusion" with the other mark. Prime Post Production and Prime Edits are not likely to cause confusion with the consumer as the names are ***** ***** different enough for the reasonable consumer to make the distinction and as such it should be approved as it is not likely Prime Edits can prove your name would be confused with their name.
Customer: replied 1 year ago.
Expert:  Law Educator, Esq. replied 1 year ago.
Thank you for your reply.
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