I got a cease and desist letter from a IP Lawyer representing a company that has the same name as mine. I've used and published

You must contact a trademark attorney immediately. Based on your facts it appears this company has a federal trademark and you claim what appears to be a common law mark. That is unfortunate for you, generally.

The answer will require review of the letter, review of your mark, review of their mark, and more facts. Contact an attorney now for advice as the consequences for mistakes at this point are considerable.

DISCLAIMER—This answer is for informational purposes only and discusses general legal principles, trends, and considerations and is not intended as specific legal advice regarding your question. This answer does not establish an attorney client relationship.

As my colleague noted, if you didn't register this business name as your trademark and the other company did, generally their rights will trump yours. You don't give details about what uses you've made since 1994, and what type of products or services you provide, or what types of products or services they provide and when their first use was. So as with almost all trademark infringement claims, the analysis depends on these facts.

Trademark owners have not only the right, but the affirmative obligation to police others' use, if they think there's infringement, but without knowing the facts here, it's unclear if this competitor is overreaching. If they provide products or services that are completely different from yours, they may have a weak claim, in spite of their earlier trademark.

Too many people who write in to Avvo do so after the fact - after they've spent time and money on businesses without getting legal advice, and as a consequence, have invested in a business they may not be able to protect if a competitor with superior rights asserts themself. There's no getting around your need to seek counsel now so you can fully disclose the situation and get your options evaluated and respond to this "cease and desist" demand.


Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.

Your question suggests that you have what appear to be "common law" rights in your business name, specifically, common law trademark rights if the name is being used as a trademark or servicemark. However, the other company also has trademark rights that may trump yours on a couple of levels.

As an initial matter, do NOT ignore the C&D letter - the other company's attorney may have already filed suit against your company and just may not have served it yet to give you a chance to respond. You should discuss the facts of your situation with a competent intellectual property attorney as soon as possible.

Turning to the other points you raise, first of all, you state that the other company "had it trade marked" by which I assume you mean they have a Federal Trademark Registration (as opposed to their common law rights, or a State trademark registration). So, if they have a Federal Registration they have "prima facie" nationwide rights in the mark and indeed, have the right to try and stop others from using the same or substantially similar mark or name for the same or substantially similar goods/services anywhere in the U.S. to prevent consumer confusion. [If they have an arguably "famous" mark, they may have even broader rights to stop other uses of the mark, even unrelated to their goods/services.]

Second, let's assume that 2003 is simply the year that the other company filed for their Federal Trademark Registration. Are their common law rights older than yours? [You can check their date of first use in their Federal Trademark Registration -- is it before 1994?) If they have older rights, that hurts you, but if your use pre-dates theirs, that's better for you.

So, depending on the facts of your situation (who used what when), you might at least have limited geographic rights to continue using the mark. Nevertheless, as a practical matter, with a Federal Registration in hand, the other company could force you to expend time, effort, and money fighting a lawsuit, even if you have legal grounds to stand on.

Don't give up hope yet - depending on the facts, maybe your IP attorney can reach an agreement with the other side. For example, a "co-existence agreement" might be a consideration (which you'd probably need to continue using your mark/name on the internet).

Per the Avvo Terms of Use, this does not constitute legal advice nor establish an attorney-client relationship. Consult an attorney for legal advice.