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[Juliette Blossom]

Hello Everyone,

I incorporated my LLC.  It's a film production company.  I was recently informed that there's two you tube videos where my production company name is used.  When I previously had searched my company name on google, these videos did not come up, but they were posted in 2007 so they were before I incorporated by company this year. 

I even did the name check before incorporating and it came back that my name was available. 

I haven't seen any work out of these guys since the videos in 2007 and they don't have any imdb credits under their name or my production company name. 

I thought by incorporating my LLC, it means I own the name.  I also did a trademark search and the name isn't registered.

If i hadn't invested so much time and money into the company, I'd go back and change my name, but sadly this isn't so.

Does anyone know if them having two youtube videos using that name trumps me being incorporated as an LLC under that name even if their videos were made before my LLC?

I'd really like to keep my name, but I don't want them to be able to go after my company. 

Thank you for your time and hopefully someone knows the answer to this. 

[Kaitlin]

Checking for availability of a trade name is not the same as doing a trademark search to see if the name is available as a trademark.  Trade names usually just have to be different enough for the post office to tell you apart, and they only check your own state.  The standard for trademark infringement is likelihood of confusion and involves a more complex and wide-ranging analysis.

That being said, you have to be talking about "trademarks" to begin with before you have a trademark infringement problem.  If you've been using your trade name not only as your business name on your contracts and stationery, but also to advertise your services, then it's being used as a trademark.  The question then becomes, are these folks with the youtube videos also using the name as a trademark?

If the name is being used to show that several videos with that name come from a common source, then that sounds like a trademark use.  If it's just a catchy title for a video that several people have happened to use, that's not a trademark use.  Also, even if the name was being used as a trademark for a production company making the video, you should check to see if they're still using it and, if not, when they stopped.  If 2007 was also the last year they used the mark, depending on various other factors, you might have an abandonment situation where they've lost whatever rights they once had. 

Here are some sites that explain trademark basics and may be helpful:

http://www.ideafinder.com/guest/glossary/g-trademark.htm
http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm

[JSonnabend]

Forming an LLC does not guarantee "ownership" of the LLC name.  It may be evidence of trademark use of the name, but it guarantees virtually nothing.

If there are other parties with the same (or even similar) name who were using the name first, any rights that party has to the name will trump yours.

- Jeff

[Dee17]

I have almost similar question but mine is organization's name. Another party holds the same name as my group and we have the same purpose as well. I requested from them to change their name soon as I learned they have the same name as my group but nothing has been done. What I should do?

We are located here in the Middle East and the party the one that holds the same group name as mine is part of a cultural group as well. I founded and organized the group in the year 2003 we are a non govt non profit and no membership group we have a website, and facebook page too moreso have companies that support my organization as well. I'm very much certain I am the legitimate one, have documents and pictures to prove it. Some people now gets confuse who's who group and there are instances that the member of the other group treats me like am the copycat. The group that have the same name as mine was established I think 2005.

Do I have grounds to sue them? What should I do to fight for what I believe is my right? 

Hope someone out there could help me.

[Trademarkroom.com]

Dear Julliette,

In the UK incorporating an LLC will not give you rights over the name of that company.  Rights over a name or mark must be acquired through use of the mark in the course of trade as a trade mark or by registration of the mark with the UK -IPO under the Trade Marks Act 1994. 

The fact that someone else has used your company name as their trade mark might give them rights over that mark depending on the length of use, financial input, reputation etc. 

Your options are to do a trade mark search and on successful results (no similar or identical marks already registered for the same classes) file an application to have the mark registered, if the other person using the mark cannot prove significant public reputation and financial investment in the mark over a period of time (5 years), the mark should be yours.

Registering a trade mark gives you an exclusive right over that mark for the goods and services it is registered for.

I hope this helps.

Owen


I can be contacted by email at owen@trademarkroom.com

Disclaimer: This post does not constitute legal advice.