Legal Question in Business Law in Massachusetts

Re: dispute over use of business name

Even if you do have superior rights to the use of your company name, you may still need to hire an attorney to guarantee that right. A thorough statement of your case and a demonstration that you do not intend to back down could put an end to the dispute before it devolves into litigation.

Re: dispute over use of business name

The answer may be, "it depends." You indicate that the other person claims to have used the name prior to your use, but you weren't able to discover his use via the internet. Assuming that you also checked telephone listings in the state, and that there were simply no listings showing use by him, it may be a fabrication on his part, and he would be unable to prove prior use. If he were aware that you were a senior user of the name, and created his entity knowing that you had superior rights, there might be a claim for unfair competition.

Notwithstanding, it is possible for two entities to have rights to a name, but be subject to limitations. I.e., if he operates in a different area, you and he could potentially use the name simultaneously without any consumer confusion.

On the other hand, the fact that he has registered a corporate entity in that name, and has hired legal counsel, suggests that he is willing to pursue the matter. Assuming that he has, in fact, been using the name at a time prior to your use, it may not be bad faith for him to incorporate, etcetera.

You would then need to decide whether it is worthwhile to hire legal counsel to defend your rights to the name, or whether your costs (i.e., new listings, printing new advertising materials, sending out mailings to customers announcing a change of name, and taking into account loss of name recognition) of changing to a different name would be more efficient use of time and money than contesting his use. While success might mean that you establish clear senior rights to the name, it might also mean that you have rights which are limited to a specific market, which might be sufficient or not depending upon the nature of your business.

In any event, you should at least consult with a competent attorney to determine what your options are at the moment. An hour spent with a knowledgeable attorney is well worth the investment.

(In addition, if you do choose to pick a new name, or in general when you create a new business, it is worthwhile to speak with an attorney so that you can promptly establish rights to that name before investing too much in business expenses tied to the name (e.g. domain name, business literature, banners, signs, incorporation, etcetera.)

Good luck!

Re: dispute over use of business name

The answer is you both may have the right to the name. Being incorporated may give him an advantage if you choose to change the form of entity you operate.

You should contact an attorney ASAP to protect your rights. Moreover, you should investigate trademarking the name as well. If it has been trademarked by him already it could cause you problems as well.

Good Luck.

Re: dispute over use of business name

I have read your question and the answers of other legal counsel with much interest. I concur that you should always do a complete check with the Secretary of State, seeking all possible combinations or forms of the name, as well as differing types of business entities that could be legally using the name under Massachusetts law. You should not neglect checking other name registration systems, and these include trade and service mark registrations on state and federal levels, this depending upon the business type. You might look to the alleged "location" of your opponent's first use of the name and the context of its use. What if any filings were made locally, on the state or federal level. There are possible bad faith claims, but also, remember, since ours is a registration first protects system in most cases, you would have a significant challenge to prove those claims. All of this is best done with the assistance of legal counsel. Lawyers can often get information, before litigation, that may result in a good resolution. Your "proof" approach to the question of establishing prior use may not be strong, but depending upon the factual history(and any admissible evidence presented)you may support a case, or defense. Most attorneys I have dealt with in this area seem to agree that if listed with the Commonwealth or other authorized governmental agency, that gives priority. The suggestions about further protection or registration of the name, and territorial limitations cited by other counsel are all enlightened and good advice. There may be a simple answer to your problem, one which will be totally "legal", but requires a bit of flexibility on your part. This alternative may work to diffuse the situation, give you the use of the name or one similar enough to make it work for you and yet different enough to keep your adversary at bay. There are stronger legal remedies available that will ultimately test not only the veracity (thruthful nature)of your opponent's claims, but may provide a court order to stop him from using the name, again, it is up to the "finder of fact" judge or jury, depending on the relief sought. However, as with all litigation, there significant costs, fees and risk of loss. Though facts do not often line up perfectly, there is legal authority and precedent to help decide such convoluted questions. You may infer the alternative resolution from this response, but if not, please feel free to contact me if you would like to briefly discuss other possibilities.

: dispute over use of business name

Great and thoughtful answers by other counsel.

The bottom line is get a lawyer ASAP.

Re: dispute over use of business name

The one who first "reserved" the name with the MA Secretary of State (assuming thi is in MA).