Legal Question in Business Law in Texas

Re: Rights for use of a business name.

The previous owner might have a case against you for trademark dilution, if not trademark infringement. It is incorrect to state that something is not "trademarked," like you can state that something is not patented. Once you use a name in conjunction with goods or services, it is a trademark (or servicemark). I think what you meant to say is that it is not a *registered* trademark. Registered trademarks are given stronger protection (by statute) than unregistered trademarks. As to whether this previous owner has a case against you for dilution or infringement depends upon the specific facts about where, when, and how the name(s) have been used by the previous owner and by you. In any case, I would seriously consider registering *your* business name as a trademark, as a preventative measure, since it will let you take advantage of the stronger trademark protections afforded by statutory law.

Re: Rights for use of a business name.

Not much of a case for the use of a street name, unless there are only a few businesses on the street, and the name is unusual. Whether your name is 'deceptively similar' to his is purely a question of fact, and expensive to prove.

If you haven't done so already, you should get your business name registered. That will put you in a stronger position.

Re: Rights for use of a business name.

What kind of similarity are we talking about here?

Example 1: Westheimer Auto Mechanic

Example 2: Westheimer Auto Repair

vs

Example 3: Westheimer Auto Parts

Example 4: Westheimer Auto Parts 2

How close is your name and theirs?

Re: Rights for use of a business name.

The competing arguments may include:

For you: The similar elements of the two marks are geographically descriptive, and therefore entitled to little if any protection under trademark law.

For them: Even if the claimed mark or elements of it may be geographically descriptive, the mark has been used so extensively that consumers in the relevant market recognize it as the claimant's mark.

How the argument is resolved is fact-based.

I am a trademark specialist in my 10th year of practice. If you would like more information about this situation or the registration of your mark, please let me know.