I own The Ohio Kings of Comedy,LLC. There is another group of promoters promoting a show called All Ohio Kings of comedy pt 1 on their social media and flyers. Which leads me to believe they will have a pt 2. Can I cease and decease them from using my likeness? Thank you. And I wait for your response
You own an LLC, presumably in OH. That's a corporate name. Only the OH Secretary of State cares about that, if anyone, and it's up to them to make sure there aren't 2 companies with the same corporate name in OH.
Maybe you also used "OH Kings of Comedy" as a trademark, from some date, and maybe you didn't, from any date. Maybe you registered OH Kinds of Comedy for a state and/or federal trademark, maybe you didn't, and your entity only acquired unregistered rights in your geographic area for whatever goods and/or services your entity provides IF that use preceded your competitor's use.
Same questions for your competitor, although we know from your facts that their use of the name "All OH Kings of Comedy" was used as a trademark for a show and was used nationally on social media. We can presume that was for a show in OH.
Your rights vis-s-vis your competitor depend on whether your use (and/or your registration) of a trademark predated their use (and their registration). If you used the trademark before them in the same or confusingly similar business, your rights are superior to theirs and you can hire an OH-licensed trademark lawyer to send them a cease and desist, and to search to see if this is an available trademark and register it if necessary.
If your rights are not superior to theirs, your OH-licensed trademark lawyer can help you figure out how to re-brand your trademark.
See your own trademark litigator to discuss all the facts so they can advise you how to proceed.
Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.
Since you are putting your business out there as "The Ohio Kings of Comedy, LLC" within the state of Ohio, you are establishing a trade name or a trademark to that effect. Anyone who attempts to use a name which will potentially infringe on your trademark can be sent a cease-and-desist notice.
However, the potential infringement is based on whether your commercial use, or registration of your trademark with the United States Patent and Trademark Office (USPTO), predates the other party's commercial use of their name. I do not think that you've registered your trademark with the USPTO, since you have not mentioned that fact.
If you had performed a registration, you surely would have mentioned it, since that would give you national protection of your trademark within the area of business in which you operate. Since you probably have not registered with the USPTO, you are looking at being protected within the state of Ohio.
But it seems like you are in luck, since the other party seems to intend to operate solely within the state of Ohio as well. So, really, this comes down to a question of who came first. If you entered into business and began promoting yourself before the other party, they are in infringing on you. However, if their use in commerce predates yours, then you are actually infringing. Then they can send you a cease-and-desist letter.
Regarding the infringement, you should consult with an attorney experienced in trademark litigation to research sending a cease-and-desist letter. Also, you should look into registering your trademark with the USPTO to ensure national protection, and so that any other parties will be officially put on notice that the trade name belongs to you. Good luck!
This answer is provided for educational purposes only and is not intended as the practice of law in any jurisdiction in which I am not licensed. The answer does not constitute legal advice nor does it create an attorney-client relationship. The answer is based only on the information provided, and may be inaccurate in the context of additional facts that have not been provided. If you need assistance, hire a professional who can listen to all of the facts and help you make informed decisions.
You may have, at least, common law trademark rights, depending on all of the facts, and you may be able to sue for trademark infringement; you should discuss with an intellectual property attorney 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.
This needs to be fleshed out in more detail. You may be able to enforce prior use rights with your name (trademark) even if you never registered that. These "common law" rights will extend to the scope of your market penetration and market reputation. I will offer some general remarks on trademark due diligence below, but encourage you to get some solid advice on this specific situation before taking any action on your own.
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 OH 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.
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.
Years licensed, work experience, educationLegal community recognition
Peer endorsements, associations, awardsLegal thought leadership
Publications, speaking engagementsDiscipline