Legal Question in Business Law in California

trademark= owning a name nation wide?

I have the same company name of someone who does the same sort of buinsess in Fl.. Over 5 years ago I bought, (in good faith and not aware of this person), the dot com name for the business. She contacted me and demanded the name. Up until that point she had NEVER purchase a dot com under the name of the business. I consulted an attorney who said, she was in business longer than I was under the same name (but in a different state), so I should give her the dot com. So I did. I however kept my business account and have operated under my business name ever since. Now five years later she is demanding I stop using my business name. Becasuse she NOW has a trademark on the business name. Is she allowed to make me stop doing business under my business name? She claims that she all along had this trademark, but I was not aware of it until right now. Please advise. Yes, I did get a dba when I started my business.


Asked on 10/30/06, 9:00 pm

2 Answers from Attorneys
Terry A. Nelson Nelson & Lawless

Re: trademark= owning a name nation wide?

You got bad advice about the .com, so don't fall into that trap again. I'm sure your instincts were against that decision then; listen to them now. You need to get actual legal help and advice to resolve your concerns, not anonymous hints from the internet. Feel free to contact me if interested in doing this right.

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Answered on 11/07/06, 1:21 pm
Bryan Whipple Bryan R. R. Whipple, Attorney at Law

Re: trademark= owning a name nation wide?

Yikes! I think you made a mistake when you surrendered the dot-com URL name to her; you didn't have to, in my humble opinion.

Registering and using a Web address name that is the same as someone else's business name is NOT trademark infringement per se and is NOT illegal cybersquatting or cyperpiracy per se. Indeed, you would only be infringing the other person's right to the name if at least one of the following were true: (1) the name you picked was also a FAMOUS (not obscure) trademark like Coca-Cola; (2) you registered the name for the primary purpose of re-selling it, rather than using it yourself; or (3) you were using the name primarily to divert inquiries customers were intending to make to the other company.

For example, registering the domain name "ChevronDeGuatemala.com" would be illegal as an infringement of Chevron's famous trademark, but registering "RightNow.com" was not an infringement of Right Now Software'a trademark, because it was not famous.

I think you were incorrectly advised by your former attorney. I can't be 100% sure, without knowing the business and the potential for conflict, but I'd say I'm 99.5% sure that if you registered your Web name with no intent to resell it but only an intent to use it yourself, you were under no legal compulsion to surrender it.

As to what to do at this point, I'm not so sure; there are several issues in addition to identity of name in a trademark-infringement analysis. As you can imagine, there are more than one Joe's Bar and Grill in the 50 states. You may be entirely free to thumb your nose at this person, or you may indeed be infringing. A more detailed factual analysis would be necessary, but this time don't give in without competent advice.

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Answered on 10/30/06, 11:46 pm


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