deceptively similar usage question

[tvw88]

What is the name of your state (only U.S. law)? Texas.

I live in Austin Texas and recently filed for a DBA successfully with the County Clerk for the name of business 'Austin luxury rentals' with my brother Walker, we are both realtors in the state of Texas. Two days after successfully filing for the DBA and creating various social media accounts with the name Austin luxury rentals we received a cease and desist letter from managing broker at Austin luxury Realty also in Austin Texas. He is claiming deceptively similar usage, saying that us using the name Austin Luxury Rentals is confusing potential customers. Austin luxury Realty is not at the DBA in the state of Texas fornally, but he is claiming to have a common law DBA since they have been in business for 5 years. He cited a trademark number for Dallas luxury leasing in Dallas which has an accompanying logo, which seems irrelevant, we see no other evidence that he has against us for deceptively similar usage. Do you think he has a case against us for deceptively similar usage?

 

[quincy]

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Please be sure to include the name of your state. Thanks.

 

[quincy]

What is the name of your state (only U.S. law)? Texas.

I live in Austin Texas and recently filed for a DBA successfully with the County Clerk for the name of business 'Austin luxury rentals' with my brother Walker, we are both realtors in the state of Texas. Two days after successfully filing for the DBA and creating various social media accounts with the name Austin luxury rentals we received a cease and desist letter from managing broker at Austin luxury Realty also in Austin Texas. He is claiming deceptively similar usage, saying that us using the name Austin Luxury Rentals is confusing potential customers. Austin luxury Realty is not at the DBA in the state of Texas fornally, but he is claiming to have a common law DBA since they have been in business for 5 years. He cited a trademark number for Dallas luxury leasing in Dallas which has an accompanying logo, which seems irrelevant, we see no other evidence that he has against us for deceptively similar usage. Do you think he has a case against us for deceptively similar usage?

With the registration of a business name with the state of Texas, there is a (rebuttable) presumption of ownership in that name. However, because the other company has used a similar name in the state for a longer period of time than you have, this company could have a legitimate cause of action against you.

Trademarks do not need to be registered, with either a state or federally, to gain rights in the mark. The rights are gained through the use of the mark.

What is looked at is not only the first to use and the first to register a mark, but also the second user's knowledge of the first user, the geographical locations of the first and second users of the mark, the similarity between the marks, the similarity of products or services being offered, the markets for the products and services, and if confusion is likely to be generated or has been generated by the dual use.

Because you have received a cease and desist letter, and you have already invested time and money into your business under the name you have chosen, I recommend you sit down with a trademark attorney in your area - for a personal review of the facts and for advice and direction on how best to respond to the cease and desist.

Here is a link to Trademark FAQs from the Texas Secretary of State: http://www.sos.state.tx.us/corp/tradefaqs.shtml

Good luck.