I registered my business with my corporate name, not a trade name. Another business, after the date that I registered my corporation, registered the exact trade name of my corporation and is doing business as the same name as my corporation. We are in the same industry and geographical location. Is this infringement on my corporate name? Do I have any legal rights?
A corporate name is not a trademark unless you use it to show the source of your products. Registering your business as a corporation does not grant you trademark status in the name. It only prevents people from registering the same corporate name in your state. You may use your name in a way that gives it trademark status, but more information would be needed to know. If you do, the date you registered your corporation and the date the other business registered its trade name are factors to be looked at here, as are same industry and geographic area. Use of the trademark in commerce is the criterion for who has senior rights. You should consult with a trademark attorney in private with the actual facts and get advice on your rights and how to proceed.
Please note: This response is solely general information or suggestions about your issue. It is not intended and should not be considered as legal advice, and I am not your attorney. Such professional advice requires creation of an attorney-client relationship and full disclosure to an attorney of a client’s circumstances and that attorney’s opportunity to analyze those circumstances and review any relevant documents against applicable law.
Generally, you may be able to sue for, at least, common law trademark infringement.
You should discuss with an intellectual property and/or business attorney licensed in Maryland in a private consultation.
Legal Disclaimer- the information provided herein is not legal advice. Transmission of this information is not intended to create, and receipt by you does not constitute, an attorney / client relationship. Although effort has been made to ensure that the answers are correct, Law Office of Walter Tencza Jr. cannot and does not offer any warranty, express or implied that the answers contained are accurate statements of law. This document is provided for informational purposes only. Viewers must not act upon any information without first seeking advice from a qualified attorney outside the context of this document.
You may have enforceable rights under common law if you were using this as a trademark and were the first to do so within the scope of your market area.
I encourage you to get some solid advice on this before responding and I will offer some general remarks on trademark clearance below that you might find helpful.
Before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the MD secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property.
If you need more clarification, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Legal, LLC on the basis of this posting.
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