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Lizbeth L. Hasse

Lizbeth Hasse’s Answers

2 total

  • Are incorporated business names in the state of CA really protected from anyone else using that name?

    I have an incorporated business name in the state of CA and multiple companies are using that name. What can I do to stop this? What type of attorney do I need?

    Lizbeth’s Answer

    If the companies are outside of California, and you don't have priority federal trademark rights in the name, the other companies may be free to use it. Inside California, they could register a similar name as an LLC even if you have the CORPORATEname. If someone else in California or in another state is using the name and has priority trademark rights in that name AND is in the same "channel of commerce" as yours is, or markets to the same clientele, you might find yourself stepping into a trademark infringement claim against YOU if you move proactively to seek to stop that company's use. You should consult with a trademark attorney about the rights you have and the rights others may have relative to you before attempt any "cease and desist" or other efforts to limit another's use of the name.

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  • Can I bring a lawsuit for trademark infringement if I have an intent to use trademark application?

    Hi, My company has an "intent to use" trademark application that was filed a few years ago and I recently discovered that someone else is using a very similar mark for a product that is nearly identical to ours. We sent them a letter to say th...

    Lizbeth’s Answer

    Bear in mind that having a trademark registration is different from holding a trademark. Your "intent to use" application does not yet amount to a trademark registration. However, you may or may not have a trademark and, possibly, superior rights over another user of the the same or a substantially similar mark, regardless of whether or not you have completed the trademark registration process. Are you actually using the mark in commerce either within your state, or in interstate commerce?
    If so, you may have earned common law trademark rights that enable you to enjoin another's later commencement of use of a confusingly similar mark in your channel of commerce. My colleague is correct that without registration, you do not have some of the arsenal of enforcement rights you would have against a later user if your registration process were complete.
    You should also examine your trademark registration application. Have you renewed the intent to use application on a regular basis so that it is still active and you have not lost your initial filing date? Are you ready now -- actually using the mark in commerce -- so that you can file a use affidavit and complete the process. Don't forget, you are only allowed a limited number of renewals of an intent to use application.
    Finally, you must always be careful before acusing another of trademark infringement that you are indeed the superior user with trademark rights. There is a risk that the user you've recently noticed actually had accumulated rights before you started your actual use of the mark. People who have assumed they held a valid trademark have found themselves on the defense side of an infringement action after accusing what turned out to be a prior user of trademark infringement. For this reason, a thorough search by a reliable search firm is also an advisable first step before commencing a trademark application or asserting a trademark right.

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