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My sister and I started an Event Production Company. We plan to produce shopping events where vendors can apply to have a booth, and if accepted they pay us the fee and we invite the public to come and shop from those vendors - basically an upgraded and hip "craft show". We also had a logo drawn in our own likeness. After starting this business, we also decided that having a parent company would be a good idea, so we registered three dba names - and we had two versions of our logo.
Several months down the road, we received a "cease and desist" letter from a Screen Printing company (t-shirts, posters, stickers, and labels) whose name is similar - they have used three versions. They claimed we were infringing upon and diluting their trademark rights and that we must quit using any and all versions of our name and our logo (which was drawn in our own likeness).
In response to this letter, we offered a compromise where we would "cease and desist" using our parent company name and logo but continue using another name. Even though they print and sell items and we produce events and the two are not related, we felt it was an act of good faith and that the words were so commonly used in conjunction with each other they could actually be deemed one word, like the words "hot dog", so therefore, the name we would continue to use would be different enough, especially in different industries.
Also, before responding to them with this compromise we requested to legally reserve the name with the Texas Secretary of State. Upon reviewing our request, the Texas SOS agreed and deemed the words frequently used in combination, and therefore considered one word so we could then move forward with our name reservation without consent from the owner of the reservation.
We responded to them by certified mail on [content removed]. Since then we have received another letter, this time from an attorney who says we are still infringing upon and diluting their trademark. We discovered that on [content removed] they registered more dba's. This lawyer also claims they have federal trademark rights, even though they just filed for federal registration on [content removed] and it has not been approved. We also filed for trademark registration with [content removed].
My basic question is this - we believe that our logo and our name as the name of an Event Production Company does not infringe or dilute their logo or name as the name of a Printing business. Is this correct and should we stand firm?We produce shopping events and they print and sell items like t-shirts, posters and labels. The businesses are in the same city. Our graphic logo is drawn in a caricature of our own likeness, their graphic logo is not drawn in anyone's likeness. We want to stand firm in the belief that our name and graphic logo does not dilute or infringe upon their name and graphic logo in regards to trademark rights - two different names, two different logos, two different industries. We have accepted money for our services already, so we do have proof of commerce under our mark. How can one company own exclusive trademark rights for ALL services and goods under a name - many businesses have the same or similar names in different and same industries. Our surname is included in our business name, can we use it without any problems - surnames cannot be trademarked, correct, but can they be protected?