I am a small business owner, and I run a jewelry store. I have a store at a small shopping outlet close to my home, and have been running my business for the past 4 years. The other day, I was speaking with one of my neighbors and she congratulated me on the new store location that I had opened at a local mall about 2 weeks earlier. I was surprised as I had not opened a new store location. As it so happened, I took a trip down to the mall out of curiosity and found that a jewelry store was indeed, open at the mall, and the store name was exactly the same as mine except that instead of using the word ‘Co.’ at the end of the business name, this jewelry business name thief used the word ‘Ltd.’!
I was livid. I contacted a lawyer at once and asked that a letter be written to this new store owner. I have been operating my own business for 4 years under my business name. Everyone in the neighborhood knows me by that store name. It is a relatively small community, and the individual who just opened a store under the same name as mine should have known that I already had a business with that name! In fact, I discovered that this business owner is an old time acquaintance that I had not spoken to in years.
This new store owner wrote back to my lawyers saying that she had a trademark on her business name, and if I had trademarked my business with the United States Patent and Trademark Office, there is no way that they would have given her the business name to use. I think this is a lie because I looked up trademark registration processes and know that it takes up to a year for a trademark application to be successful! True, I don’t have a trademark for my business name, because all I did was register it with my state’s secretary of state and obtain a business license. However, surely, this is enough to make me the bona-fide owner of my business name!
What should I do? This name issue is confusing my customers, and I am afraid I am losing them to this name thief if they think I am the owner of the new store at the mall!
Dear (Name Withheld),
You are experiencing a common dilemma among small business owners. Issues tend to pop up from time to time among neighbors where feuds about ‘who owns it?’ could arise.
Actually, simply having your business registered in your state may not be sufficient to protect your business name, especially if you intend to expand your business beyond your current locale. Having a federally registered trademark would provide greater protection.
I would recommend that you retain a trademark lawyer who will help you perform a search at the United States Patent and Trademark Office. If your neighbor’s trademark was registered after you started your business operations, and you have sufficient proof that the community recognizes your business name as belonging to you due to your business promotions, advertising, or any goodwill you have developed in the community with that business name, then you could have an argument of ‘secondary meaning’ in the business name. However, to delve more deeply into this argument, I, again, recommend that you obtain a trademark lawyer to advise you more specifically as to how to go about this issue.
All the best!