QUESTION: “Can I sue someone who will open a business using similar fictitious business name as mine without a trademark license agreement? My partner and I owned the same four business shops together in different locations. Unfortunately we split up, each of us own two of business stores. I just heard that he will open the exact same business near my shop, and use the similar name of my business. If I don’t have trademark registration of company name, do I have the right to sue him?”
Temple City, CA
Two scenarios are possible, either the sale the restaurant includes a trademark license to use the words, slogans and phrases branded by the company, or it doesn’t. An important point to consider is in the event the sale of the company includes a trademark license (or transfer), the licensor may have a duty to exercise a requisite degree of control over the licensee’s products, otherwise, the trademarks rights of the licensor and licensee can, in some cases, be relinquished or diluted.
The policy behind this requirement or valid trademark ownership and licensing is simple: Take for example a deal where McDonald’s licensed its brand name, logos and slogans to a fast food restaurant, but allowed the restaurant to sell items inconsistent with the selection and quality consumers have come to expect from the McDonald’s brand of fast food. Unchecked quality control would hurt McDonald’s and the licensee here because consumers would be less able to rely on the McDonald’s brand to identify the source of goods and services marketed under the brand. To learn more about trademark law and how it differs from patents and copyrights, see my legal blog on “Copyrights or Trademarks” on the LAMTL Tech & IP Blog.
Other trademark issues to discuss with counsel may include online marketing efforts (share or separate), and social media properties. In a recent blog I summarize the various differences between company names, trademarks, domain names, and social media properties, and their increasing importance in online marketing.
Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal in 2014. Office: Ph: 310-751-0181; firstname.lastname@example.org.
Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2013. All rights reserved.