My situation deals with trademark law, cyber law, and domain law. I've had a domain name for over 10 years. I resell products on my website and provide news on upcoming products. My income comes from ad revenue and from selling products. It has come to my attention that some scam artists are purposely using my business name, which is the name of my website, to post fake ads on Facebook and Instagram. The ads ask people to download an app, which has a nearly identical name to my website. They are selling counterfeit products through the app. (The owners of the app might be in China). Customers are buying counterfeit products through the app thinking that they are ordering from me. People have emailed me and started posting negative online reviews about my business because of this fake app and my reputation is being tarnished. The scam artists are also making a lot of money through the sale of counterfeit products. There are a lot of fake social media accounts and websites using my business name. I want to send a Cease and Desist notice to everyone using my business name and consider suing the makers of the fake app. However, my business name is not a registered trademark.
YOu do not need a registered trademark to sue for federal and state unfair competition and state passing off. See a local IP attorney who can walk you through your various causes of action. Good luck
You have a number of aspects to consider here. Without a federal registration, the common law right you have garnered in the name only extends to the scope of your geographic market penetration and market reputation. And no, just because you have a website does not automatically mean that you can claim "everywhere" as a market area. That is a more complicated analysis. So you should NOT be sending any business a C&D without the advice of legal counsel. Now the fact that this entity you complain of here might be in a place like China poses a huge problem for you. Namely, how do you enforce your rights exactly? I always suggest of course that you clear and file for trademark registration at the federal level, but that will not solve this problem all on its own. I will offer some remarks about TM registration below but really encourage you to reach out for some legal guidance on how best to proceed.
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 IL 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 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. See the links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine and our overview guide.
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-Lapin, LLC on the basis of this posting.
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