Legal Question in Intellectual Property in Colorado

My wife earlier this year started a photography business and using the name Chasing Butterflies Photography by Melinda San Roman. However on 10/18/10 my wife received a message on her facebook account from a photographer in northern New Mexico claiming she belongs to the Professional Photographers Association and would take legal action on her if she doesn't change the business name. The other persons business name is Chasing Fireflies Photography. I did however find that Chasing Fireflies actual name belongs to a kids clothing company that was established in 2006 or so. This lady is claiming that the similarity in the names would cause confusion and perhaps some of her clients would mistaken our business for hers and she would lose business. We live in southern Colorado which is only 26 miles away from this other photographer. We did not know she existed as we reside in Colorado until yesterday. Though my wife has dreamed of doing this since 2002 when I first meet her we had other priorities to fill before she could invest the time and money she has now. Does this lady have legal action to file such a claim? I agree there are similarities but I would compare this problem to McDonald's and Burger King offering the same variety of food. Living in a small community options are limited so I feel she has written this letter as a desperate attempt to make us change our name but tried to put more muscle into it by stating she belongs to PPA and they will back her up.


Asked on 10/19/10, 8:07 am

2 Answers from Attorneys
Kevin B. Murphy Franchise Foundations, APC

As a franchise attorney, I can say this issue arises frequently. The answer depends on a number of factors. Who has protected (registered) the mark and how (federal vs. state)? The other lady may only have common law rights in her immediate trading area. The overlay is called "likelihood of confusion" - when a customer hears the mark "Chasing Butterlies" would they automatically say "that's the company in New Mexico. I think not. Your argument is the names are sufficiently distinct (butterflies and fireflies are so different sounding) there would be no likelihood of confusion. Of course, it would be a matter for a jury to ultimately decide. Anyone can file a legal action. The issue is will they win and do they have the resources? Consult with a good trademark attorney in your area for specific advice.

Mr. Franchise - Kevin B. Murphy, B.S., M.B.A., J.D.

Franchise Attorney

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Answered on 10/24/10, 9:53 am
Kevin B. Murphy Franchise Foundations, APC

Another point, organizations like the PPA don't get involved in trademark- service mark infringement cases. It's not their thing, nor do they want to spend the money it takes, which is significant. Again, consult with a good trademark attorney in your area for specific advice.

Mr. Franchise - Kevin B. Murphy, B.S., M.B.A., J.D.

Franchise Attorney

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Answered on 10/24/10, 9:57 am


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