QUESTION: Can I sue someone who will open a business using similar fictitious business name as mine? 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?
You and your (ex) partner may each have common law trademark rights which extend to a geographic region, including potentially nationwide trademark rights, irrespective of whether or not you have federal trademark registration of company name. However, based on the actual brand in question here and the nature of the business, it may be ill-advised to permit anyone, former business partner or not, to use the brand name or confusingly similar name to promote the same goods or services as it may dilute or nullify your trademark, and any other rights you may have in the trademark registration of company name, or brand name. The best strategy here is to negotiate ownership of the trademark and company name with your ex-partner in writing if this deal point was not previously negotiated during the split and consider trademark registration of the company name as it may prove to be critical.
Whether you are a technology startup, mobile application company, social network, or operating a more traditional business such as manufacturing, clothing and apparel, or in restaurant services, the United States Patent and Trademark Office outlines the benefits of federal trademark registration as:
- Public notice of your claim of ownership of the mark;
- A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
- The ability to bring an action concerning the mark in federal court;
- The use of the U.S. registration as a basis to obtain registration in foreign countries;
- The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
- The right to use the federal registration symbol ®; and
- Listing in the United States Patent and Trademark Office’s online databases.
All trademark owners must put the public on notice of their trademark rights, and enforce their trademark rights against infringers, including former partners. In this case, while you may have met the use in commerce requirement of trademark rights, you may still need to take steps to register, protect, enforce and also negotiate those rights against your (ex) partner, and against the general public.
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; email@example.com.
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.
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