Legal Question in Intellectual Property in Arizona
Questions about a Trademark infringement claim
Today I received a cease and desist letter from a company that has trademarked the name ''Skin Store''. My company's name is ''The Original Skin Store''. I have been using the name since 2000 as a seller on ebay, and in the last 4 years on my own internet site and I own the domain. They registered the name in 2000. I did not trademark the name because I thought it was ''generic'', but evidently not. We sell the same type of item, though I sell only my own product line that I developed under The Original Skin Store Name. So, now that I sound totally defensive (!) my questions are as follows:
1. Does the name ''The Original Skin Store'' infringe on the trademark ''Skin Store''?
2. What are the rules regarding generic terms as trademarked names?
3. If I am hosed, how can I make sure the next name I pick is not going to conflict with someone else's name? I looked my name up in TESS at the US Govnt site, and it came up with nothing, I thought I was doing the right thing. I never intended to infringe, this was not deliberate, but I have spent 8 years developing my product line under this name, and I am devestated that I am going to have to change it all. Any help or advice you can give would be greatly appreciated. Thank you.
1 Answer from Attorneys
Re: Questions about a Trademark infringement claim
There are a number of issues here. First of all, you have common law rights in the mark. The second issue is whether the your mark creates a "likelyhood of confusion " with the other mark. I believe that it would. As a generic mark your trademark could be placed on the supplemental register and perhaps in 5 years or so you could file for addition to the primary register. You could also file under the Madrid Protocol for registration in other countries, but this could be expensive.
The other thing that you could do is file for state registration in Arizona. The bottom line with all of this is that you need to seek counsel in your juerisdiction who can help you sort out these issues. The fact that the name does not come up in Tess does not mean that there may be infringement.
Contact a reputable trademark attorney in Arizona who can assist you with this issue. A good trademark search by some company such as Tompson and Tompson would give you an idea where you stand.
Good Luck!!!
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