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[Tillie35]

I opened my business and began selling my goods in 8/2008.  I setup a domain name and got the business name recorded with the local county recorders office.  I have filed taxes as a sole prop for these past couple of years.  I originally searched the net when i started the business, to find that there was one other similarly named small business at a distant location.  Lets say i am thebusiness.com and this other small entity was business.com.  It had no laws protecting it's name at the time.  I have recently been contacted by lawyers representing a very well-known corporate giant that claims they have a pending trademark to this business name.  I searched whois.com and found that the original owner of that small business (business.com) was bought out and registered to this corporate giant about a year after i started my business.  They claim to have legal access to the original creation date of that previously owned business since they have purchased it.  The Corporate giant registered the business in July of 09 when i had registered mine in Sept of 08.  However, the original creation of the website by the previous owner was 8/07.  We have almost identical services, but slightly different business names.  The only difference is mine starts with "the"...  They say because of the confusion with identical services, they would need me to release that domain name and business name.  Do they have the legal right to do this?  I feel like a corporate giant is abusing it's power by trying to make me feel threatened.  The trademark of business.com is currently in "pending" status with a filing date in Sept of 09.  Unfortunately, I am not fluent in trademark law.  If I am thebusiness.com, can they file an infringement lawsuit against me?  Also, can they legally adopt the creation date from the previous owner as their own "first use" date for their trademark?  Can anyone help?

[Spielman]

Yes they can sue you. If they are a corporate giant, there is a high likelihood they will sue you. Especially if they just bought all those trademark rights and have filed for protection. You are likely going to be viewied as the junior user, based on the facts you presented, and your geographic terrotory of use of your mark is limited, and likely stopped, as of the date of the senior users filing of the trademark application. There are lots of exaplmes of this interplay, where companies have geographic territories for the same product but with different names. For example "Hellmans mayonaise" is the same as "Best Mayonaise". Also look at Edys icecream and Dreyers Icecream. This may end up being the same type of scenario. If you were threateneed with litigation you should consider speaking with a competent trademark attorney.

[Tillie35]

I appreciate your response.  I am dis-heartened by the fact that all I have put all my effort into can be thoroughly demolished by another company because I'm the little guy.  I already mentioned the geographic location being different, but they are considered to be "international".

[BobRoberts]

"  I originally searched the net when i started the business, to find that there was one other similarly named small business at a distant location.  Lets say i am thebusiness.com and this other small entity was business.com."  ... "We have almost identical services, but slightly different business names.  The only difference is mine starts with "the"...  "

I doubt there are any circumstances where inclusion of the word 'The' will cause you to not be considered infringing a Trademark of a Sr. User (i.e., user that was using a Trademark in commerce prior to your use...  Depending on the mark (and don't tell us here) unless the mark is the generic name for a product/service, or extremely descriptive of the product or service, you are probably out of luck (but see below)... 

"It had no laws protecting it's name at the time."

As soon as someone begins using a mark in interstate commerce, they are protected under certain Federal Statutes, even if they haven't Registered their Trademark with the US Patent and Trademark office.  Their use is also protected under the Common Law.

" They claim to have legal access to the original creation date of that previously owned business since they have purchased it."
I see no reason why they cannot claim the Legal Priority of a prior user, but perhaps anopther could chime-in to confirm this...

"  I feel like a corporate giant is abusing it's power by trying to make me feel threatened...  If I am thebusiness.com, can they file an infringement lawsuit against me?
"I am dis-heartened by the fact that all I have put all my effort into can be thoroughly demolished by another company because I'm the little guy."

When a business adopts a Trademark, they have an obligation to make sure that they haven't adopted a trademark that is likely to cause confusion with another trademark in existence.  Though it sounds like you tried this (and actually identified the  Tradeamrk that is now giving you problems), your misunderstanding of Trademark Law failed to 'raise the red flag'...  As I mentioned above, I doubt that your mark is saved by the fact that you added the word 'The'

Dependingon the particulars (again, we don't want those here), the big business is just policing it's trademark rights- Something it must do to protect their Trademark Rights.

The fact that you began using your mark before the other Mark began the Federal TM Registration Process *might* help you, if the other company knew that you were using the mark in commerce a couple of years ago, and failed to act.  However the fact that you knew of the other mark when you adopted your mark would seem to weigh heavily against you.  Not sure how that balancing act would come out.

As Spielman mentioned, it would be adviseable to get competent Trademark Counsel, inespecially if there are circumstances here that would support your use of the Trademark. 

Good luck.

Not to be construed as legal advice.

[Tillie35]

Thanks BobRoberts!  I agree that due diligence was not completely done on my part.  Maybe this will just have to be a hard leason learned.  Your post was informative and I appreciate that.

[artchain]

Tillie, maybe the corporation will work with you on this.  Clearly you have an investment in branding.  I've seen situations where large companies provided a small amount of money to help businesses rebrand.  I'm not sure how to broach this without it seeming like extortion, but maybe if you just expressed how much you've invested in your brand, they will offer you something.