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Registered Trade Mark, WHAT!

Discussion in 'The Taxidermy Industry' started by 71Challenger R/T, Dec 8, 2013.

  1. 71Challenger R/T

    71Challenger R/T New Member

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    We have had the same business name forever, yesterday we got a letter saying that the business name was a registered trademark of someone else. It even recommended we do a search of the ustpo site . low and behold the name is now a registered trademark of this guy. I hate to have to change the name but it appears not to do so will be a violation of trademark laws. Some how it does not seem right that he can do this.
    Any suggestions? or is it best to just change our name.
     
  2. If you can prove you used the name before he did, then you have a case. Of course, it would have made life a bit easier if you had registered it when you started using it. It would have saved you a bit of trouble. Now your in the position to PROVE this name has been attached to you before anyone else. (old invoices, advertising, taxes, etc.) Once you do this you will then fill out the appropriate paper work and register said mark in your name. If you can't, then you will be forced to change it. All signs, business cards, invoices, everything.

    Not a fun thing to do. But it can be done if you had the right to the name to begin with.

    Good Luck!
     

  3. EA

    EA Well-Known Member

    I had a similar battle with another local fishing club. I started up a club in 1995 and registered the name Extreme Anglers. We were a BASS affiliated club. Low and behold a former disgruntled member starts a club in 2005 using the exact same name but affiliated with the FLW organization. I wanted a cease and desist, but no one really wanted to hear my complaints...They ended up skirting around it by adding "THE" to the name. So now we have Extreme Anglers and THE Extreme Anglers within 20 minutes of each other. Fortunately our club is flourishing and they have pretty much faded away.

    If it comes to it, a slight name change by adding maybe The, A , LLC (if not already) etc. may get you by without losing your identity. It worked for them.
     
  4. Your right, EA. Slight name change is absolutely an option. However, It still has to be registered with State and or local Gov. to make it legal.

    But, Like I said, If you can prove that name has been used in conjunction with your business BEFORE the other guy, then it's yours. Then the prod is on the other guy to refrain from using the name and or forced to modify. If not, your screwed.....
     
  5. Tenbears

    Tenbears Member

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    I have been down tat road before and it is no fun. Proving you used the name prior to the registered owner does not work. When a trademark is registered it is published in the gazette. Any interested party has 30 days to file an notice of contest, if a notice was not filed then there is little one can do. When it goes to court the judge will say that anyone who uses a fictitious name as a trade name and fails to trade mark that name leaves them self open to having the name trademarked by another. Adding the, LLC, An A or any other prefix, suffix, or adjective will not help either. as long at the basic name is involved and the goods and services are the same it will constitute infringement. Believe me I spent over $10.000 in court cost and attorney fees over the exact same matter. in the end I was out my expenses and had to pay the other guys attorney fees and costs. It is a loosing proposition no mater how you look at it. If I had won I would have still have spent the money in fees. As the trade name owner does not have to pay your fees because he is acting within due process of the law. Not to mention the trade name owner has no obligation to file the suit in your jurisdiction. and can file in the region most convenient for themselves. When all was said and done I wished I had just changed the business name, and been done with it.
    But don't Take my word for it pony up the money and talk to a lawyer, If he is honest he will tell you it is not worth the trouble, and expense. If not he will convince you have a winnable case, all the way up till you go broke, or loose the case.
     
  6. pir^2h

    pir^2h Retrievers give you the bird

    I would think about Tenbears said. As my old man always told me, "Any dumba$$ can learn from their own mistakes, a smart man learns from someone else's". I don't think Ten bears would have any reason to pass you BS about this. He has been down the road. Cut your losses.
     
  7. Your close, Tenbears. However, As an example. If I were to register a product, lets say Ketchup. My family name happens to be Hunts. Well obviously a company/trade mark already exist under the name Hunts Ketchup. BUT, I could alter that name to say, "Huntsville" Ketchup and I would then have a original "Mark" or Trade name that I could register.

    This subject can be argued and fought in many ways . I have been familiar with Trade Mark and Copyright laws for the last 20 years or so. A judge may simply look at "when" a trade name was registered. BUT, by law, its the one that used the trade mark first (must be able to prove beyond any argument) is the one that "owns" the mark. Its no different than let's say a songwriter under Copyright law. Once it is put in tangible form (ie; written, recorded, etc.) then the copyright exists. Without having to legally register that Copyright through the library of Congress. Same applies to a Trade Mark. Once it has been set and made public, by law, It identifies your company. BUT, Like I stated earlier. If you had registered this mark there would have been no doubt, but now YOU have to prove this was tied to you and your business BEFORE the other guy. If you can not, Well, Start re-designing your advertising material and let it be know to your tax professional. Time to start over with the public's knowledge of you existence.

    Another path I have seen it go is that you would "Pay out" your competition for the rights to the name. After which, you would register it appropriately and he picks another name and everyone moves on. But these are rare cases.

    Tenbears was right in the fact that it can in-fact cost ten's of thousands to fight if the second party is not willing to negotiate. Sometimes it is best to just re-define your name, register it, and move on.

    Do your homework and do what your gut tell's you. Sometimes the only ones that win these things (unless you know a high powered loud mouth) are the blood sucking attorneys. But it is doable. Just have to ask yourself if it's worth it........
     
  8. M.T.

    M.T. Active Member

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    One thing to consider is that the other guy may have also had that name for several years before registering it. I don't know the exact situation, but you'de have to figure that one out.
     
  9. Tenbears

    Tenbears Member

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    I think barrett Creak Ia giving you some bad advice. or at least false hope. Nothing Personal Berrett creak You also made some good points.
    For One trademark ownership using personal names are exempt from sole ownership and follow a completely different set of guidelines than fictitious names. For example Long ago I had the business name Western Fittings And had used it for nearly 25 years. then all of a sudden I got a notice I had infringed upon a registered trademark. In reality the name was newly trademarked. in spite of the fact I had used the name for over two decades and a 3 year court battle. I lost the case And I had a very good lawyer. I was ordered to cease and desist the use of the name immediately, and to pay the name owners attorney fees and all court cost.
    Later the individual filed suit in civil court claiming that my use of the name for the 3 years after he had notified me resulted in a loss of income. his attorney argued that any and or all customers who walked through the door could have been looking to do business with the trademark owner. thus I was fraudulently stealing his business To make a long story short I had to also pay him twice what the gross sales for that three year period were. Bankrupt the business, and nearly me too as it was not a corporation rather a sole proprietorship.

    I learned the hard way that what is legal and what is right are not always the same thing. As a former military man I have always believed that sometimes you just have to fight for a principal.. Boy was I wrong. Sometimes discretion IS the better part of valor

    Challenger, You must make your own decisions. I would hate to see anyone else go through what I have. but you just may find this to be a challenge you are not up to.
    Do Some Research And You will find that first in time does not mean first in line when it comes to trademarks. Check Out the Big Mac Case between McDonalds, and s 40 year small resturant owner in the 70 when the big mac came out