Can someone force me to change the name of my business because they own the trademark to the name? (See additional info)

Asked 11 months ago - Boston, MA

I started the company in college. I bought the domain name and have been using it as my business website for over two years. Today I got an email from someone saying that I have to change my business name because they own the trademark to that name. However, they obtained the trademark in September of 2013. Over a year after I had already been using the same name. We both are offering photography services. And yes....I am kicking myself for not trademarking the name.

My question is, what rights do I have legally? Can they actually force me to change the name of my business even though we are both operating in completely different states and I was using it way before them? And does the fact that I have proof of ownership over the business name as my domain since 2011 count for anything?

Attorney answers (4)

  1. Jon Kenneth Perala

    Contributor Level 11

    7

    Lawyers agree

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    Best Answer
    chosen by asker

    Answered . In the US, one gains trademark rights through use of the mark in commerce, not through registration. If you began using the mark before the other company, you would have superior rights. One exception is if the other company filed their trademark application before you began using the mark. Please note that just owning a domain name is not the same as using the mark in commerce.

    You really do need to consult an attorney on this one; it is best not to reply to the other party on your own.

  2. Peter Joseph Lamont

    Pro

    Contributor Level 18

    4

    Lawyers agree

    1

    Answered . If certain conditions are met, yes. I suggest that you speak with a local business lawyer before you take any action. You can use Avvo's "find a lawyer" tool to assist you.

    If you found this Answer helpful, please mark it as "Helpful" or "Best Answer". Your feedback is greatly... more
  3. Henry Lebensbaum

    Contributor Level 20

    2

    Lawyers agree

    Answered . Yes.

    Criminal Law (all misdemeanor & felonies in District and Superior Courts), Drunk Driving and Drug arrests, Sex... more
  4. Peter Lence Lattin

    Contributor Level 8

    3

    Lawyers agree

    Answered . I agree with the other answers. I will add the following: there is a difference between registered trademarks and a common law mark that arises from use in commerce. You may need an attorney to assist you in this dispute, but you can also get some quick answers to your questions here: http://www.uspto.gov/faq/trademarks.jsp#_Toc275.... Also, as another attorney mentioned, use of a trademarked name in a domain name is not enough--you have to use the mark in commerce. However, I will add that if you also have a domain name dispute on your respective websites, you can retain the services of an attorney in a WIPO arbitration proceeding. This is a relatively efficient and inexpensive process. see http://www.wipo.int/amc/en/domains/

    This answer does not create an attorney-client relationship, and does not constitute legal advice pursuant to an... more

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