No company wants to lose business to a competitor using a name similar to its own. Such a use can cause confusion among your customers and wrongfully associate your business with an inferior product. What should you do when this happens and how do you prevent it from happening?
When Another Business is Using Your Name
The first thing you should do is talk to a trademark attorney. Several factors must be considered before the correct course of action can be pursued, including: (1) which business was using the name first, (2) how similar are the goods and services provided by the two businesses, (3) how similar are the names of the two businesses, (3) the geographical area each business is operating within, (4) whether or not the name of either business is considered a “strong” trademark, and (5) whether or not either business has registered its name with the United States Patent and Trademark Office (USPTO). A trademark attorney will analyze these factors to determine whether your business has superior rights in its name.
Should the trademark attorney determine that your business does have superior rights, he or she will likely write a cease and desist letter to the infringing party explaining the legal arguments against it. Should the infringing party fail to respond to the letter, the trademark attorney can file a lawsuit in the appropriate court seeking a court order preventing the business from continuing to use your name and for damages related to the infringing use.
How to Prevent Others From Using Your Business’s Name
While there is no way to completely control the name a competing business chooses, there are things your business can do to legally fortify its own name. First, choose a name that is considered legally “strong.” The best names are completely made up or are unrelated to the goods and services your business provides. Think “Apple” for computers or “Xerox” for copiers. For more information on choosing a strong trademark, see my article here.
Second, file a trademark registration with the USPTO as soon as you use, or plan to use, your name in conjunction with the sale of your goods or services. A federal registration gives your business the exclusive right to use the name, in connection with your goods or services, throughout the United States. This is extremely important in an internet-era where everything is advertised nationwide online. In addition, your trademark will be published in the USPTO’s online database where all businesses can and should search before choosing a name. This makes it less likely that another business will choose a name similar to yours in the future. For more information on the benefits of a federal trademark registration, including the possibility of statutory damages, see my article here.
Third, make use of the ™ SM or ® symbols, depending upon which is appropriate for your business. Use of these symbols strengthens your mark by showing others you are claiming it and using it as a trademark.
If you take steps to fortify your business’s name by registering it with the USPTO, you maximize your legal rights and reduce the risk of disputes and costly litigation in the future. For more information on the trademark registration process, contact one of our attorneys for a free consultation.
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