trademark infringement, responding to a cease and desist letter in WV

You should definitely take a stand. Normally its large retailers bringing lawsuits against smaller retailers in the hope of "squashing" competition. Success will depend on the "one word" that you use. The strength of the trademark will depend on the type of word you are talking about. Fanciful marks are coined terms specifically created to function as a mark. think of Polaroid, Exxon and Xerox. These words were unknown to consumers before being created as marks. They are the strongest marks and are very protectable, meaning you probably can't use the word even if you are using it for a different product like "Polaroid T-Shirts" of "Exxon Fertilizer."Suggestive marks suggest qualities which are desirable for a product, but do not actually describe them. Think of "7-Eleven" for a convenience store, "Seventeen" for a teen magazine, or "Best Buy" for cheap electronics. Though not as strong as fanciful or arbitrary marks, suggestive marks are distinctive and highly protectable. "Computer Gal" may very well be considered a suggestive mark. Descriptive, surnames, and geographical marks which are merely descriptive of goods or services, are much weaker than fanciful, arbitrary or suggestive marks. To be protectable, these marks must have secondary meaning. That means that out in the marketplace when people hear that mark, they don't just think of the generic word, they think of the product. It is this "secondary meaning" that generates the most litigation. Our firm has represented many businesses, large and small, that have sought to enforce or defend against these types of lawsuits. Particularly if you do something completely different than the other retailer and add a disclaimer, you stand a great chance of success. Our fees for small businesses and start-ups are very reasonable and the telephone consultation is absolutely free. My contact number is 516 248 8000 if you would like to discuss this in further detail.

So, my questions are: "How good of case would I have for being able to keep my business name?" (she sent me a 'cease and desist' letter).

Answer: I'm going to go out on a limb here and assume that the trademark being asserted against you is [company name omitted]. That mark is federally registered for "residential computer services" and its registration application was filed on January 11, 2006.

Which means a few things: First, all persons were on notice as of January 11, 2006 that [company name omitted] was being used to brand residential computer services. Second, the owner of [company name omitted] can prevent anyone else from using that or any confusingly similar mark (such as yours) if (1) the other user began its use after January 11, 2006 and (2) the owner of [company name omitted] uses the mark in the same geographic area as the latter user. As for the geographic area question, having an internet presence and/or toll-free nationwide support may greatly expand the geographic area where a mark is being used -- in short, internet advertising just may dissolve any geographic separateness that you think may apply in your situation. Or not, depending on how the two companies use the internet.

How good is your case? The answer depends on how extensive the geographic scope of rights are in [company name omitted] and whether your use of [company name omitted] began before January 11, 2006. If you began use before January 11, 2006 you very likely enjoy the unfettered right to continue to use the mark in the areas in which you used it before that date.

The better question though is: How much are you willing to spend to defend whatever rights you can muster in [company name omitted]? The best outcome for you is a judicial finding that [company name omitted] is not protectable as a trademark and that everyone can use it -- a highly unlikely finding and one that the other side would very likely fight to a jury trial. The second best scenario is a judicial finding that you forever have the right to continue to use [company name omitted] in the area that you historically used the mark (because you began use before January 11, 2006). The third best scenario (and I think most likely) is a finding that you have the right to use [company name omitted] in the area where you historically used the mark but that you have to stop once the owner of [company name omitted] enters that area (which will happen with a part-time contractor and a yellow page ad a week after that decision is issued).

None are rosy outcomes and all will cost you a lot of money. Fighting "on principle" the owner of a registered trademark who began its use first is courageous -- but expensive and potentially self-defeating (though I'm not sure even how to articulate the "principle" worth fighting for).

Adding a disclaimer to your website may not be a good idea. It could be taken to mean that you acknowledge there may be confusion in the marketplace caused by your use of [company name omitted] -- an acknowledgment you do not want to provide if your defense to a claim of infringement is that there is no geographic overlap of the consumers who seek your services and the consumers who seek the services offered by [company name omitted].

The proper response to a cease and desist letter requires careful thought by a trademark-savvy attorney. You need to seek such advice.