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[franku]

I started a business last year and used a name that is descriptive of the work we do (e.g. Regulatory Law Advisers).  A competing company formerly used an unregistered name they consider to be similar.  In the past six years that company has phased out its use of the “similar” name (e.g. Regulatory Legal  Analysts) and has not used the name for any company promotional materials for the past three years.  There are also other companies in this field using “similar” descriptive names (e.g. Regulatory Legal Consultants and Regulation Law, etc).  The competing company does have current contracts in the old name but does not even use letterhead with the old name.  I have been contacted by the competing company and told that since the company names are “similar” and the initials are the same that I should cease and desist use of my company’s name.

My questions are:

1)      As the names are descriptive, can their use be protected from the use of similar sounding names?

2)      If there is protection for the name, would having old contracts in the similar name but having no other commercial promotion use of the name be sufficient to protect the use?

Thank you for your help here.

Frank

[JSonnabend]

1) As the names are descriptive, can their use be protected from the use of similar sounding names?

To the extent the names are merely descriptive of the services they cover, no trademark rights exist in the name.  That would leave you free to use your name, but you might ask yourself why you would brand your services with a name that anyone else can use.  How would a prospective customer who's heard of you find you?

2) If there is protection for the name, would having old contracts in the similar name but having no other commercial promotion use of the name be sufficient to protect the use?

I'm not sure I understand the second question, but I think it may be answered as follows.  To the extent that your use of the mark predates the use of the mark by another party, your rights are likely superior to their rights.

- Jeff