Legal Question in Intellectual Property in New York

Re: Suing a Competitor

One would need a bit more information before being able to fully discuss your options. One preliminary question would be whether you registered your trademark. If you did, your recourse is more clear.

If you did not, that does not necessarily mean you have no redress - it merely makes the challenge more difficult.

If you'd like to discuss your situation, feel free to get in touch, either via phone or e-mail.

Re: Suing a Competitor

Yes. This happens all the time. Trade Secret Misappropriation, Trademark Infringment, breach of contract, tortious Interference with Business Relations, etc. are all possible causes of action to threaten and/or bring.

While it would be good if you registered your trademark, rights in the U.S. are gained through use , not registration, and so I don't think that's a necessary issue. I assume you've use the mark in interstate commerce for four years and that creates trademark rights more than registration. If he is confusing customers, I would seek an immediate injunction (order of the Court for him to stop) in Federal Court so he can't irreparably damage your business.

I do think a Key question is whether you had any agreements with the former consultant, even oral or implied.

He would be liable for misappropriation of these customers, or breach of such an agreement. There might be much sympathy if a factfinder learns he's stealing the fruit of your hard work, after you helped employ him.

Re: Suing a Competitor

If you have a trademark for your corporate or trade name, a non-competition agreement with the former consultant or can show that he is intentionally interfering with your existing clients or contracts, perhaps litigation may be the answer for you. Absent these, it is very difficult to control competitors' actions, provided they do not resort to fraud or misrepresentation. Have a commercial litigator review the facts with you and consider strengthening your brand name through trademark registration. There is almost no protection in having a company registered with a certain name without having a registered trademark for such name as well. Consult an IP lawyer for trademark registration matters.