What can you do if you find out another company is using your business name? It was probably quite a shock when you found out, but now you must be wondering if you can change the situation.
Let’s look at a few scenarios to see if any match your situation. Then we will talk about ways you can defend your business from infringement.
1. The Business Name Is Trademarked
If you have registered a trademark or service mark for your business, you have taken advantage of one of the most reliable methods of protecting your company name. It means you have performed a trademark search to ensure you have selected a unique or original name and have gone through the steps to claim it as yours.
The trademark protects your business's identity and prevents someone else from using similar words, names, or symbols to sell similar goods or services. You can trademark your name just by using it, but if you register the trademark, you will have documentation to back up your claim easily.
Once you have your trademark, start using your business name of your products, services, and advertising immediately.
Corporations, limited partnerships, and LLCs often are required to register the business with a state or federal authority. Even if you are not required to do so, registration can be helpful for fending off would-be competitors that want to use the same name.
Since you probably performed a domain search yourself through the state incorporation records before you registered with your chosen business name, others will likely do the same. Your registration will show the name is already in service.
3. Another Business Claims It Had the Name First
If another company alleges it was using the business name before you, it is necessary for you to prove otherwise. You must be able to show you were using the name before the other company claiming it. The best way to do so is to produce records, product labels, or advertising that predates the other company’s claim.
4. Same Name or Similar Name?
If you are not required to register and if you have not trademarked your business name, you still have rights to it that may be enforceable. Not only that, but the other company’s name does not need to be identical for you to charge infringement. However, you need more than a similarity of the name to win your case.
You need to show that both your business and the one sharing your name are sufficiently similar or related that it causes confusion with customers.
A potential remedy that could be a win-win for both parties is if you consent to another company using the same name. If you determine that there will be no unfair competition and the other company courteously requests it, you can consent in writing to allow the other business to use the same name or a similar one to yours.
A cease-and-desist letter is the first remedy to use if you have not given consent for another business to use your name. It must be carefully worded, so the other business is more willing to comply. Unless you are prepared to take it to court, you should keep the tone neutral and polite. It is possible they were unaware of your company when they began using the name; give them the benefit of the doubt while making it clear you wish them to stop.
Intellectual property litigation is the next step. A trademark lawsuit will require you to prove three things:
- You have registered a trademark or service mark in the name
- Someone else is using the same or similar name to sell similar goods and services to yours
- The infringer’s use of the name is confusing customers or diluting the power of your trademark
If the court rules in your favor, an injunctive remedy is the most common. The court tells the other party that it must stop using the name. That order will be enforced if needed. If you have suffered a monetary loss that can be traced to the infringement, you may be able to recover damages, too.
If you wish to use the same business name to open a second location and keep the records separate, it is not infringement. Otherwise, the only way someone else can legally use your name is if you grant written consent.
To protect your name, you should register your business in your state, perform a trademark search to ensure it is not trademarked, and use the name immediately on products, services, and advertising to show other businesses that the name is already claimed.
If you find your name has been infringed despite these efforts, you will have legal recourse to make the infringer stop. You can send a cease-and-desist letter; if that does not work, you can litigate.
Consult an experienced intellectual property lawyer to help you prepare for your trademark registration and represent you in any legal action you may decide to take to preserve your rights.