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[zelionprime]

There's a competitor in my city with a very similar business name to my company's business name. My competitor's business was established in out of town (over 2.5hrs away) in 1984 and has now established 3 locations in my city. Since they've come in town, they have contacted me and threatened to take me to court over trademark siting my business name is too similar to their business name.

After doing some research, records reflect they established their trademark in []1988. Their trademark was "cancelled-section 8" on []1994. Having no knowledge of their business and/or name (remember I am 2.5hrs away in a totally different city), I established my DBA on []1994- talk about timing!

On []1997, my competitor registered the trademark again and it's still current today. In summary, there was a 3 year gap between their trademark registrations. During that 3 year gap, i established my DBA, in a different city and county that's 2.5hrs away which means I was not infringing on their trademark when I established my DBA to do business in my city. In 2003, i renewed my DBA (1 year before the 10 year DBA expiration mark) keeping my DBA current. I've never let my DBA expire.

Now that they have established 3 locations in my city, they are threatening me with trademark infringement. I have all of the documents proving my date of DBA registration and renewal. I also have the documentation of their trademark registration history which clearly points out the cancellation of the first trademark, and the the registration of the current trademark which took place 3 years later. I've been told that I have a right to do business in my city using this business name, but i can't open more locations outside of my city because of their trademark. I don't have a problem with that at all. I've also been informed that since I registered my DBA during the 3 year gap in their trademark registration, my competitor does not have the right to establish locations in my town because I registered my DBA with that name during that 3 year gap period there was no trademark.

Is this true? Is there an opportunity for me to file against them and have them move out of my city because their business name is too similar to my business name? Who's in the right, who's in the wrong?

Thanks in advance for any advice!

[JSonnabend]

First of all, you provided enough information to identify the marks, so you may want to be careful.  If you want me to remove the thread, let me know.

That said, the situation you have presented is a close call.  I believe you have some reasonable arguments to support your continuing use of the mark, perhaps even to exclude the other party's use in your area.  Of course, more facts would have to be explored for a better answer.

- Jeff

[zelionprime]

First of all, you provided enough information to identify the marks, so you may want to be careful.  If you want me to remove the thread, let me know.

That said, the situation you have presented is a close call.  I believe you have some reasonable arguments to support your continuing use of the mark, perhaps even to exclude the other party's use in your area.  Of course, more facts would have to be explored for a better answer.

- Jeff

Thanks Jeff, yes please remove the thread. How much more details do you'd need to get a better idea?

[JSonnabend]

I edited out the information that I used to find the marks.  I see you edited as well.  In any event, I think that should do it.  Let me know if you're comfortable with the changes.

As for the question, I would want to explore the nature and extent of your use, the same with the other side's during the non-registered period, etc.

- Jeff

[zelionprime]

Looks good to me Jeff. I appreciate it. As far use is concerned, do you mean what type of business or the type of industry? Forgive my ignorance, i'm green to the issue.

[xyzzy]

You're going to want to consult with a trademark attorney in your area - trademark cases tend to be highly fact-specific.  There are at least a few issues here.  First, are the marks even valid?  If they're descriptive of the services involved, the Lanham act may offer only thin protection to your competitor.  Assuming that the marks are valid,  are they confusingly similar?  They may not be - a survey could shed some light on that.  What rights have you acquired in your local area through your use?  Since you don't have a Federal trademark registration this is going to be determined, at least in part, by state law.

As a law clerk, I once worked on a case nearly identical to what you've described.  We represented the little guy.  It went on for years, and he spent a lot of money with us.  Trademark law seems to favor those with deep pockets.  Sad but true.

[BobRoberts]

As others have mentioned, this would be very fact specific.

"I've been told that I have a right to do business in my city using this business name, but i can't open more locations outside of my city because of their trademark. I don't have a problem with that at all. I've also been informed that since I registered my DBA during the 3 year gap in their trademark registration, my competitor does not have the right to establish locations in my town because I registered my DBA with that name during that 3 year gap period there was no trademark."

First, I would say that regardless of the 3-year gap, the other party has a duty to police their trademak rights.  Courts may give 2, 3 or even 4 years for the other party to police (stop a confusingly similar mark from being used), but beyond that, you might have a strong argument for continued use of the mark in your geographic area regardless of a Federal Registration, so long as your mark was adopted in good faith.  How broad a geographic area a mark is accorded could strongly depend on the industry that you are in- restaurants and banks may be given a smaller area of protection, whereas more specialized businesses may be accorded a larger area to exclude businesses with confusingly similar names.  Now the flip side of preventing the other business from expanding into your geographic area would, among other things, depend on how long they have been doing buiness in your area,the industry, etc...

As also mentioned, see a qualified Trademark Attorney tha could answer questins more directed to your specific situation; not just any attorney, but one experienced in Trademark matters.  Good luck.