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[freedom1]

I learned that one of my employees trademarked my business name while under my employ. I have received a letter claiming that I must cease my business immediately under that name. His trademark is described as an exact duplicate of my business name, description and mission, of which the actual description was plagerized from my own writing. What is my recourse? Certainly this cannot be acceptable.

[freedom1]

I might add, it's obvious I am no attorney, although I did seek legal counsel before establishing this name, as well as doing a thorough research to ensure I wasn't treading on any one else's territory. Any advise or knowledge anyone here has to share will be greatly appreciated. Understandably, I'm completely shocked at this discovery.

[LauraN]

Sheesh, some people.  I'd be shocked, too.

I don't really know any more than you do, but if you read the reply that another more knowledgable poster gave to my post yesterday about common law protection, you'll see that it applies to you as well.   You were already using the name in commerce (as this former employee clearly already knew) and therefore have common law protection. 

What I don't know is if you can press charges against this person.  Maybe start a new topic with that question in the subject line?

[JSonnabend]

First of all, your former employee did not "trademark" anything.  He might have sought or even received registration for the mark, but he did not "trademark" it.

That distinction is important because the trademark office does not award trademarks, it merely registers existing trademark rights.  Those trademark rights, in turn, are first established through use.  First to use, first to own. 

Thus, if you have been using the mark for some time prior to this person's apparent registration, you have senior rights (which may be of limited or far-reaching geographic scope depending on your use), and you may be able to cancel his registration.

You used an attorney before.  I suggest you speak to one again now, and not delay in doing so.

- Jeff

[Pinter]

The OP's question has relevance for an issue I'm currently dealing with.

In my case, we are filing for a trademark that was once owned by another company, to do the same thing they used to do. The difference is that the company in question has been out of business for fifteen years, and the trademark for their company name is listed as dead since 2003.

They have not been using the name in any way.

Would anyone from the old company be able to come and cancel our registration through the "senior rights" that are mentioned here?

[Kaitlin]

In my case, we are filing for a trademark that was once owned by another company, to do the same thing they used to do. The difference is that the company in question has been out of business for fifteen years, and the trademark for their company name is listed as dead since 2003.
They have not been using the name in any way.

Hi,

As Jeff has pointed out, use is the key.  A mark can be "dead" as to registration but still live as to use.  You want to be as sure as you can that not only the former owners no longer are using the mark, but also that no unrelated intervening users have popped up to use the mark -- or a confusingly similar one -- in between times. 

Would anyone from the old company be able to come and cancel our registration through the "senior rights" that are mentioned here?

Yes, a senior user who hadn't abandoned the mark could do that if a cancellation proceeding were begun within 5 years of the grant of registration. 


The way to check whether or not a mark is still in use (or has been taken up by others) is through a trademark search that covers not only the federally registered marks, but also "common law" marks -- that is, unregistered marks. 

The search should be done by someone who truly understands trademark law, because the parameters governing the analysis are relative ones, requiring frequent judgment calls.  The standard for infringement is "likelihood of confusion".  An identical mark on identical products is a no-brainer, but it takes knowledge of and experience in the law to advise how close is "too close" for comfort when the marks and/or the goods are not identical.  In my experience, the average business attorney doesn't have that sort of knowledge; a trademark attorney is best.

If you're forced to do it on the cheap yourself, however, make sure you read up on what goes into a "likelihood of confusion" determination.  Searching the USPTO trademark site and this forum will help.  Also a lot of law firms have short pieces they've written up to help inform their clients.  Searching "likelihood of confusion" in quotes in connection with "trademark" and/or "channels of trade" should get you some sites speaking to the subject.  Remember to check that the sites are US based, as our law differs from others'.

Good luck.
-------------------------------------------
Incidentally, I'll mention an important caveat:
When it comes to the name of a business people often confuse "trade name" and "trademark."   Your trade name is registered with your state as the name you do business under and it is entirely possible for the state to permit you to register a trade name which in fact will actually infringe someone else's trademark.  Most trade names just have to be distinguishable enough for the post office to get the mail right when someone wants to sue you.  Trademark law deals with branding, and the goal is to keep consumers from being confused as to the source of goods. 

[Kaitlin]

What I don't know is if you can press charges against this person.  Maybe start a new topic with that question in the subject line?

While as a technical matter you wouldn't "press charges", since trademarks aren't a criminal matter, it is certainly possible to sue on the basis of common law rights.  The job of proving your case may be a bit harder than with a federally registered mark, but common law rights are indeed legal rights.  The usual first step before suit is a "cease and desist" letter.

[WIAT]

I would think a cease and desist would definitely work. If the former employee takes it to an attorney and explains the situation, the attorney would undoubtedly explain that the former employee was in the wrong [after he stopped laughing].

Some people are just amazing.