Tuesday, February 2, 2010

But Her Mark is Hundreds of Miles Away

Dear Rich: I was just contacted via email by a woman in another state. She asked me to cease and desist using my trademark if I wanted to "avoid further legal action." My website's domain name is not the same as her trademark. My company provides very similar services but I only operate in Central Florida, hundreds of miles from her business and I have no plans to go beyond my small world. Any advice. There's an old Russian saying, 'Small potatoes but my potatoes.' Actually we're not sure if it's Russian. We think we first heard it in this movie. In any case, we can relate to your problem. Unfortunately, the short answer is that you're not in a good position and would probably be required to change your name.
The registered user. The registered mark has been in use since June 2002 and has been registered since November, 2009 which would give the registered user a presumption of nationwide priority. If you've been using the name since before 2002, you may have limited rights to continue using it in your geographic area but that argument is muddied quite a bit by the fact that both of you are reaching a nationwide audience with your websites. The marks are identical and as you acknowledge, the services are the same. So, if we were a betting blog, we'd bet pretty heavily that the registered user could stop your use.
What should you do? The Dear Rich Staff thinks that the path of least resistance is to change your service mark and to notify the registered user that you are doing so. You can probably continue using the name for your LLC if you're just using it to sign contracts, write checks or for tax filings.