We’re an online business and have been in operation since 1999. We own our domain name, which is also our company name. Our company name is not trademarked, but we are in the process. It’s come to our attention that a competitor started a business in 2003 with a business name very similar to ours. They also registered and have been using a domain that is very similar to ours since 2011. The competitor simply put one word in front of our domain/business name to create theirs. Where do our rights fall in this matter? Are the names similar enough that it is considered an infringement on our rights since we have been in commerce 3 years prior to the formation of the competitors company in 2003? Can we issue them a cease and desist or would we have to be officially trade marked first?
1 Answer from Attorneys
Trademarks rights arise out of use, and not when they were filed. The first party to use the trademark generally gains superior rights.
It is impossible to effectively advise you without having more information about the respective trademarks and the nature of each of yours, and your competitor' business. There are simply far too many areas of trademark law that would need to be addressed in order to give you a more definitive answer. If you'd like to discuss your matter with me further, please feel free to contact my office.