Legal Question in Business Law in California

Re: Using name to misrepresent organization

Why would the Secretary of State care about your dispute? And why are you asking us? You have a lawyer, sue! And register your name as a federal trademark, if you can.

Re: Using name to misrepresent organization

You may want to check into trademark protection. Use of a trademark establishes your right to it, along with whether or not the name can qualify as a trademark. If you have been using the name continually for the past 15 years, and can prove it, you may also qualify to have a registered TM. And, this is federal law, not just state law.

Re: Using name to misrepresent organization

The Secretary of State's responsibility ends with making a computerized check at the time incorporation (or out-of-state registration) papers are filed, to determine whether another California corporation has the same, or a very similar, name. Only a slight dissimilarity will satisfy their search-and-compare criteria. The S/S nowadays sends out leaflets to new corporations advising them that incorporation alone does not assure that the name selected is legally OK to use in trade.

You need to do three things: (1) Do a trademark search to make sure the competing organization hasn't tried to register their name, or yours, or something else very close (and if they have, you need to file a protest with the USPTO); (2) file your own application for a trademark or service mark; and (3) consult with a qualified intellectual-property attorney to see whether you can squelch the competitor using common-law trademark or unfair competition principles that don't require prior registration - these principles provide only limited protection but a true expert in this field might be able to assist you effectively.

Re: Using name to misrepresent organization

Thank you for your question. All trademark concerns aside (as those have been touched upon in previous answers), you also have legitimate claims for unfair business practices and other interference with commerce causes of action. Because a previous cease and desist letter was ineffective, it would seem reasonable that litigation would be the next logical step. As others have noted, the Secretary of State is not the proper party to go pursue, rather you need to, as soon as possible, take action to prevent this organization from continuing to harm your association.

Although you mention that the Board has an attorney, if his/her agreement with your association does not include this type of representation, feel free to contact me to discuss this further.

Yours truly,

Bryan

Re: Using name to misrepresent organization

Complain away. However, your remedy is a suit for unfair use and infringement. IF you can show it is done to cause and misuse confusion, and if you can show you actually have the rights to the name and image you want to claim, you may be able to succeed in forcing a change and even winning damages. Even the credible threat of a valid suit might prompt a resolution. If your current lawyer is unwilling or unable to handle this, then consult with new counsel. Feel free to contact me in that case.