Another Business is Using Our Name – What Should We Do?

By Josh Gerben, Esq.

Your business’s intellectual property is what makes your brand unique and helps you stand out in a crowded industry. When an individual or business infringes on your mark it can have a significant impact on your brand’s success. Confused consumers could be steered away from the products or services you offer. Even worse, your brand’s reputation could be damaged, if the infringer offers inferior products while using your business’ respected name.

While taking legal action against another business can be stressful, it’s important to assert your trademark rights, so that you can maintain control of your business name in the future. Outlined below are several steps, that help walk you through what should be done if another business is using your business name.

1. Engage an Experienced Trademark Attorney to Help You Understand Your Rights

While it’s important to take action against trademark infringement, we don’t recommend that you tackle the challenge of asserting your trademark rights on your own. Instead, partner with an experienced trademark attorney, who can help you understand and navigate your rights as a registered trademark owner. Your attorney will assess the potential infringement and decide which legal action(s) would be most appropriate. While you continue to focus on building your brand, your attorney will work to protect it.

2. Determine the Likelihood of Confusion Between the Brands with the Same Name

It is possible for two businesses to use the same business name without conflict, as long as the likelihood of confusion between the two brands is low. One example of two businesses using the same name is Delta, which is associated with both an airline and a faucet manufacturer. Because consumers aren’t likely to confuse faucets and air travel, both businesses can use the same name.

Consider the products or services offered by the other business that is using your name. Is there a possibility that consumers could confuse your brands? If there’s little chance of confusion, both businesses may be able to continue using the same name. However, if the products or services offered by the other business are similar to your own, and therefore easily confused, you may need to take action. Your attorney will assist you in determining whether there’s a likelihood of confusion in the marketplace.

3. Take Appropriate Legal Action

If your attorney determines that the other business’ name is confusingly similar to your own, they’ll want to act swiftly, to put the infringer on notice before damage can be done to your brand. Each instance of infringement is unique, and the action taken varies from business to business. The action you can take is also dependent upon whether your trademark is federally registered.

In many cases, a cease-and-desist letter, written by your attorney, is enough to stop the infringement. You may also need to resort to more formal legal action, such as filing a complaint in federal court.

Ultimately, if another business in your industry begins using your business name after you’ve used it in commerce, you are likely within your rights to ask them to stop.  That said, before you send a cease-and-desist letter, you should consult with a trademark attorney because any legal claim is very nuanced and depends on the facts of your situation. An attorney will be able to determine what steps you should take in your specific case.

You’ve worked hard to create a unique business name, and maybe you’ve even built a strong following for your brand, so it’s understandable to be concerned when you find another business using the same name. If someone else is using your business’s name, contact a trademark attorney at Gerben IP. We can help you to determine whether the other business’ mark is confusingly similar and can assist you in asserting your legal rights.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.