We created a DBA under our parent corporation for a new retail store concept back in April 2014. The location opened up Aug 1st, 2014. We just found out someone else just opened an exact same type of store under the exact same name two weeks ago in the same state (NY) but different county. We own the domain names and records of starting the business started back in the early spring and clearly we're established before they where. Can we Cease and Desist? Do we have the rights to this name? They are located in our advertising area and we believe this had to of been intentional. We did not put in for the trademarks yet, however we do mark all logos and advertisements with a TM. . We did an thorough search throughout the US and no one had any trademarks or patents using it for anything including retail. It was free and clear. Then they pop up months later. They are in our advertising area (we do allot of radio.) Thanks in advance!
2 Answers from Attorneys
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox News on the importance of the due diligence process and an overview guide:
That said, if they are able to show that they were in fact first to use the mark in your geographic market area and to it natural expansion, then they likely have prior use rights. Of course in an internet age establishing the market area can become more chewy. But merely having a website does not imply that you are doing business everywhere. They may be international, but this will not matter if they were still in your area first. Any use of the mark in their home country would not count as use here however.
I think you should explore your options with TM counsel. Based only on the info provided it sounds as if you were established here first. Keep in mind, registering an entity with the state or a DBA does absolutely nothing to procure TM rights (this is a very misunderstood area). And if this other competitor has since filed an app at the USPTO or even acquired a registration you are still free to oppose that or petition to cancel it based on your prior common law use. Only in such a case, the burden is now on you not on them as they are "presumed" to have the prior right (see the benefits of federal registration?).
If you would like to discuss further over a free phone consult, feel free to contact me anytime that is convenient.
Our firm is now referred by the American Bar Association (see under the New York section):
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.
Let me add a different more "business practical" perspective
The use of a trade name is primairly governed by use not necessarily by filing. Therefore, though filing with the USPTO is important it is secondary to securing your rights. In fact, sometimes one is not eligible to federal trademark protection through the USPTO if one, for example, does nto transact in interstate commerce.
Therefore, first thing you need to realize is that you have rights even if you haven't registered a trademark through the USPTO just by virtue of using a trade name first.
Second, in addition to exploring filing options for trademark registration with the USPTO or with New York State, you should consider sending a cease and desist notice to the other business. Sometimes such notice should be delayed until registration is complete, but that's a strategic decision.
Third, you may need to initiate a court action to enjoin the person from continuing to do business under the name and also claim damages under various unfair competition causes of action. Many times the cost of the law suit can be financed by the settlement reached so at the end of it you would have the desired outcome at virtually no cost.
Please ping me directly for help on this.
Roman R. Fichman, Esq.
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