Business Name Problem

[Bsteg]

What is the name of your state? Ohio

I am a partner in an LLC. We recently received a letter from an out of state attorney telling us to cease and desist using two of the words in our company name because there is a company in another state with a very similar name. Same name, we are an LLC they are an LP.

We have been in business for 2 and a half years and registered our company name with our state before we started the business. Do we have to change our name? We don't do business in their state but they say they want to do business in our state.

 

[HomeGuru]

What is the name of your state? Ohio

I am a partner in an LLC. We recently received a letter from an out of state attorney telling us to cease and desist using two of the words in our company name because there is a company in another state with a very similar name. Same name, we are an LLC they are an LP.

We have been in business for 2 and a half years and registered our company name with our state before we started the business. Do we have to change our name? We don't do business in their state but they say they want to do business in our state.

**A: so what company has the federally registered tradename?

 

[Bsteg]

They say that they are the owner of the federally registered service mark utilizing the two words that they don't want us to use.

 

[HomeGuru]

They say that they are the owner of the federally registered service mark utilizing the two words that they don't want us to use.

**A: I don't give a rat's tail what they said. What are the facts? Do your research and tell us the facts thereby helping us to help you.

 

[Bsteg]

here is their registered trademark
http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78818824

We do not have a federally registered trademark. Our company name is:
Advantage Environmental Solutions, LLC

 

[tranquility]

Any litigation is expensive. I don't see how a local trademark which contains words would apply to a business in another state which contains the same words in its business title. There are a number of posters more knowledgable than I regarding IP, but I'm not seeing a problem you have to worry about (other than my first sentence) right now.

 

[DStaub]

Were you using your name before February 20, 2006? Your common law rights may actually be superior to the rights of the holder of the federal registration. If you have the facts on your side, this should go away. Presumably, their trademark counsel knows the law.

 

[Bsteg]

Yes, we established our business in September of 2005 and registered our name with the Commerce dept. of the State of Ohio on that date.

This advice has been very helpful. Thanks for the replies and the kick in the butt which got me to do some research.

 

[LegalEagle_84]

Hi, I'm new to this forum..I've been following the threads and the only advice I can give is to approach a law firm for this matter. I can suggest Deneys Reitz (http://www.deneysreitz.co.za) and Werksmans (http://www.werksmans.co.za). They deal with business/corporate issues and haven't failed me in the past. I wish you good luck with your problem.

 

[Bsteg]

Follow-up

Well, they are going to sue us. I guess it's time to go to our attorney. I do feel like they are just trying to bully us into changing our name. We are in the same industry but do not provide the same services. Do not work in each other's States. However we do belong to the same national professional organization.