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Other company uses the same name as my company

San Carlos, CA |

I am a consultant providing consulting services under a fictitious business name. I don't have this name registered. I have been doing this consulting since 2010. I have an Internet presence established for this name since 2010.

I found today that another company uses the same name as mine which is located in the same area where I am located. This is also the consulting business but in the different area. They established their business in 2012.

I am planning to register my fictitious business name and use 2010 date.

My understanding is that by using this name, I established common use trademark and I have rights for it since I started using this name earlier. Am I right in this assumption?

Also, what can I do regarding this company that uses the same name? What are my rights?

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Attorney answers 4

Best Answer
Posted

Priority for trademarks is established by the first to use a mark for a particular product or service in a given geographic area. Under the facts that you present, you would have priority, even if you didn't register your trademark anywhere.
I suggest that you consult with a lawyer near you with experience with trademarks and intellectual property law to send a cease-and-desist letter, and to review all of your facts.

This answer does not create an attorney-client relationship. It is not legal advice. Please contact a lawyer qualified in your jurisdiction to discuss your situation in confidence, using your factual details. Avvo answers are only general legal responses. Item 9 of Avvo.com's Terms and Conditions are incorporated in this disclaimer as though it were printed here.

Bruce E. Burdick

Bruce E. Burdick

Posted

Agree that you need to consult a lawyer. That you need to clear the mark and confirm the mark before confronting a third-party about the Mark. Otherwise, Asker, you take the risk that all this will backfire due to some mistake or misconception on your part.

Posted

First consult and clear, then confirm, and only then confront.

You need to hire a trademark lawyer to help you get a service Mark registration for the consulting services you provide. Getting a fictitious name registration is not enough to protect you. That fictitious name registration is merely for the purpose of enabling people to identify who is using that business name, primarily so they can sue you if they need to for something you do under that name. Service Mark registration, on the other hand, gives you the exclusive right to use that service Mark. That is what you want. You can work with your intellectual property lawyer to register right away with the state of California and to apply for registration right away with the US Patent and Trademark Office.

I did not see you mention anything about clearing your Mark. It may be that your Mark is so descriptive you cannot get it for that someone else had it before either one of you. Since you did not tell us (and you should not tell us) the specific Mark, we do not know the answer.

If the other party has done what you failed to do and used an intellectual property law attorney from the outset, you could be in serious trouble unless you hire one promptly to defend your position and protect your rights. From what you say, it is pretty clear you are not up to the job yourself and need a lawyer's help. From what I can tell, the sooner the better for you.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

Asker

Posted

Thank you very much, Mr. Burdick. I checked USPTO web site. My name is not listed there. I called CA secretary of state and was told that they only deal with corporations and LLC. My company is sole proprietorship and I was told that the only place to have this done is the local county which brings me back to the county clerk and business name registration. However, while I was searching secretary of state web site, I found another yet business with this name which is corporation and registered this corporation in 2011. I checked the county where this corporation is, this name is not registered there. There is no evidence online about using this business name before me. In other words, it looks like I was the first, starting in 2010. What are your thoughts? Can I have an attorney to send cease and desist letter?

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Attorney Burdick is incorrect when stating that a "fictitious name registration is merely for the purpose of enabling people to identify who is using that business name ... ." The proper filing of a fictitious business statement in California with a county clerk confers substantive rights to the filer. Attorneys who are not licensed to practice in California should NOT be giving advice about trade name matters to residents of California. See California Business & Professions Code section14411: "The filing of any fictitious business name statement by a person required to file such statement pursuant to Section 17910 shall establish a rebuttable presumption that the registrant has the exclusive right to use as a trade name the fictitious business name, as well as any confusingly similar trade name, in the county in which the statement is filed, if the registrant is the first to file such a statement containing the fictitious business name in that county, and is actually engaged in a trade or business utilizing such fictitious business name or a confusingly similar name in that county. The rebuttable presumption created by this section shall be one affecting the burden of producing evidence."

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Questioner -- You need a California-licensed trademark attorney review the situation because the law requires that a sole proprietor, such as yourself, that is doing business under a fictitious business name properly register that name. Because you did not, you may not have ANY rights to assert.

Posted

There are unknown variables that bear on what you can do next.

Many times a fictitious business name is NOT protectable, at all, absent a properly filed fictitious business name statement. For example, if you provide advice on search engine optimization and do business as "San Carlos SEO Consultants" you would have very little, if any, ability to stop someone else from using that same or a confusingly similar name. Same result if you provide advice on environmental issues and do business as "The Stormwater Experts." In those situations, a properly filed fictitious business statement would have provided you with such leverage. But because both simply name the services you provide neither is protectable as a trademark or trade name.

While the California fictitious business name statement does ask for the date when you first began using the name, the date inserted does NOT mean that your exclusive right to use that name began on that date. Those rights, under the fictitious business name statute, begin when all the conditions of the statute are satisfied.

And note: The statute required you to file the fictitious business name statement within 40 days of doing business under that name. You are not in compliance. There is a very good argument, backed by court decisions, that until you do come into compliance you do NOT have any rights in the name you're using because the unlawful use of a trademark or trade name confers no rights or benefits on the one unlawfully using it. In short, you and your own trademark attorney need to consider the possibility that your prior unlawful use of the fictitious business name cannot be the basis for your claim that the new user must stop.

Speak with a California-licensed trademark attorney.

The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

Posted

It is possible that you have superior common law trademark rights under your fictitious business name, but that cannot be determined based on the limited information in your question. Before you can determine whether you have trademark rights, you first need to ascertain whether your use of the name might violate trademark rights that are superior to your own. Indeed, you made a rather fundamental mistake here---you began to use a business name before retaining counsel to conduct a trademark clearance analysis---until that analysis is conducted, I cannot tell you whether you have the right to use this trademark, nor can can I tell you whether you have superior rights over this 2012 competitor.

Further, until the clearance analysis is conducted, we cannot advise as to whether you should register for trademark protection---it is quite possible that you would fail to obtain such registration. While you are the senior user compared to the 2012 business, there may be others out there who are using the name and who have superior rights to both of you.

Further, without knowing the name and how it relates to your business, I cannot tell you whether it qualifies for trademark protection, or whether it is too generic or descriptive to serve as a trademark. In short, it is possible that you can stop this other company from using the name, but you need to do a lot of groundwork before this conclusion can be confirmed. That groundwork includes, most importantly, hiring IP counsel to conduct a trademark clearance analysis and to otherwise advise you. You can't handle this situation properly without retaining trademark counsel.

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