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What can i do if someone is has a very similar, almost the same brand name to mine? I have it trademarked and they don't.

Van Nuys, CA |

I recently found a brand that has a very similar name, almost the same as my company and provides the same goods as mine. I have already trademarked my company name and this other brand is NOT trademarked. what actions can i take?

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Attorney answers 7

Posted

In order to protect the value of your trademark, you should hire a lawyer and send a letter demanding that the other company stop using the similar mark because it is confusing. There are many factors consider when evaluating the potential for confusion. For example, if the other company started using their mark first (before your use started), regardless of registration, that company might have some common-law trademark rights in the name.

This comment is NOT LEGAL ADVICE and is posted for informational purposes only. I am not your attorney; you are not my client. Both you and any other person reading this comment SHOULD NOT RELY UPON this comment. Regardless of the information provided in this comment, any reader of this comment should CONSULT AN ATTORNEY to get the legal advice you are seeking.

Bruce E. Burdick

Bruce E. Burdick

Posted

Whoa, don't pull the trigger on that CDL until you do your homework and know you, not the recipient, owns the mark. Registration is not always equal to ownership except in certain foreign countries.

Posted

You have an options that you can take which include sending a cease-and-desist letter to the other company and filing a lawsuit against the other company for trademark infringement.

What you should do is meet with a trademark attorney and discuss your situation in private with the attorney. The attorney will be able to give you an idea as to whether the courts would find a likelihood of confusion between the two marks. In addition, the attorney will be able to do the research to determine who used its mark first and therefore has priority to use.

Registering a trademark with the USPTO (which is what I am assuming you mean by 'trademarked') only prevents others from adopting marks within the U.S that present a likelihood of confusion after registration of the mark. Companies already using a mark that presents a likelihood of confusion may continue to use their marks in the geographical areas where the companies were using the mark prior to registration.

Answering of your question is merely general advice and does not constitute legal advice. None of the statements or implications made by this answer creates an attorney-client relationship with the attorney answering the question. The statements made in this answer are not to be solely relied upon and you should meet with a competent attorney to discuss any concerns you may have regarding this answer.

Bruce E. Burdick

Bruce E. Burdick

Posted

Asker, don't confuse registration with ownership. In the US they are not the same, ownership and the winning position may rest with the first to use in the ordinary course of commerce. Lots of registrations have been cancelled by businesses that received an ill-advised CDL and turned the tables on the sender. Don't you be one of them.

Posted

You can have an attorney send a cease and desist letter.

SP@BeverlyHillsLawCorp.com
323-703-3581

Bruce E. Burdick

Bruce E. Burdick

Posted

But, not until you know you have the upper hand. If you are second user, that CDL will bite you in the rear.

Posted

With your other posting, five very good answers.
Good luck.

The above is general legal and business analysis. It is not "legal advice" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.

Posted

Before jumping to a cease and desist letter, you may want to look into whether the other company has prior rights in the brand. An attorney can help you with this analysis.

Bruce E. Burdick

Bruce E. Burdick

Posted

Yes, indeed. That's the first step. Another one is playing devil's advocate and considering how the other company will react. Is there a third party mark available for purchase that predates you and is the other company rich enough to buy it and turn the tables. Had NIKE cleverly do that to me once. It is a lesson not easily forgotten.

Posted

I agree with attorney Weiner. If the other company was using the mark prior to your own use of the mark (or before you filed a Sec. 1(b), intent-to-use application for the mark), they, not
you, may have superior rights, even if you have registered the mark and they haven't.

Bruce E. Burdick

Bruce E. Burdick

Posted

Also, if there is a 3rd party prior mark or use, the recipient may buy it and turn the tables on you. If you don't see a trademark lawyer for a clearance check, you could get blindsided and lose.

Posted

There is only one action you can prudently take. See a trademark litigation attorney immediately. Do not try to play amateur lawyer or you may be headed for an expensive lesson in trademark litigation strategy.

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.