Asked almost 2 years ago - Houston, TX
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I have had a clothing store for 13 years, since 1998. Another store in another state trademarked the name in 2007. I am being harrassed and they are demanding me to cease and desist immediately. After doing some research, I found out that this other store owner had this named store(not trademarked), open for a short time, closed down and then opened again in 2006 or 2007. At this time, they trademarked the name. At the time I opened, she was not in business.
What shall I do?
Someone who trademarks the name of your store cannot shut you down. You have common law rights in the name in the relevant geographic area. Assuming you are selling within a specific region, the person who trademarked your store's name cannot assert priority to the mark in that region. They will be able to prevent you from expanding (probably), but can't cause you to change the name of a pre-existing business just because they trademarked the name. Take the letter they sent you to a reputable local trademark attorney and have him write an appropriate response on your behalf.
My colleague gave you good advice. Your "common law" trademark rights should allow you to continue to operate your store in your area, even assuming their store also sells clothing and they have a national TM.
See an IP litigator to respond to the cease and desist letter so your ocmpetitor knows you're prepared to defend yourself.
I'd be curious to know how they found out about your store. Is it a neighboring state, are on the state line like in Kansas City or something similar? Or is it all the way across the country? Do you have a web site that you're selling from? I'm guessing that's probably what the issue is: they want your domain name. If you need help with that issue, please contact me, I'm happy to help.
The advice that you have received from my colleagues is sound. However, I urge you to exercise caution in this situation. It certainly sounds like you have common law trademark rights in the geographic vicinity in which you have operated your store. On the other hand, your rights may not extend beyond your city or state. If your competitor has begun to sell goods through a web-site or otherwise on a national basis, this situation can be much more difficult for you than it may seem on the surface. Certainly you may have difficulty expanding your operations and/or attempting to sell products on your store's web-site nationally or internationally in a manner that competes with this other store. For that reason, you may wish to consider challenging the validity of the other store's 2007 trademark in a cancellation proceeding. Alternatively, you may wish to attempt to negotiate "peaceful co-existence" with this other store. Given the fact that you have received a cease and desist letter, I would not be surprised if this matter ended up in litigation. Thus, I strongly advise you to retain IP counsel in this matter. Only when your lawyer reviews all the facts and circumstances can he or she begin to help you frame a viable strategy for successfully responding to this situation---and you should take this very seriously.
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