Threatened with lawsuit for similar business name

[SteveBurman]

I recently have created a business with the name "ProTech Auto LLC" and registered it with the state of Ohio, however today I received a letter in the mail stating that I was to be sued for using the same name as this other company called "ProTech Auto Care" also located in ohio. I made the website "ProTechCincinnati.com" I just want to know if they have a legit claim or not?

 

[quincy]

I recently have created a business with the name "ProTech Auto LLC" and registered it with the state of Ohio, however today I received a letter in the mail stating that I was to be sued for using the same name as this other company called "ProTech Auto Care" also located in ohio. I made the website "ProTechCincinnati.com" I just want to know if they have a legit claim or not?

They could have a legitimate trademark infringement claim, yes.

If consumers confuse, or are likely to confuse, your ProTech Auto with ProTech Auto Care (and on its face, it seems likely that they would), the first user of the name (ProTech Auto Care) can prevent the second user of the name (ProTech Auto LLC) from using the same or similar name as an identifier for their service or goods.

So, although you can register a name with the state as long as it is not identical to one already registered, and you can continue to operate your LLC under ProTech Auto LLC, you would have to do business with consumers under a different name (register a d/b/a) so as to not infringe on ProTech Auto Care's trademark rights.

In other words, your business could be registered with the state as ProTech Auto LLC, but you would be doing business as "Something Else Auto" (with the "something else" being a name that is unique to you and your business alone).

There are other factors that need to be considered when determining whether one trademark infringes on another, however. These factors are best reviewed by an IP attorney in your area and, if you have been threatened with a lawsuit already, you will want to speak to an attorney in your area anyway.

Good luck.

 

[adjusterjack]

There are other factors that need to be considered when determining whether one trademark infringes on another, however. These factors are best reviewed by an IP attorney in your area and, if you have been threatened with a lawsuit already, you will want to speak to an attorney in your area anyway.

I agree that a lawyer consult would be a good bet as the two businesses are 21 minutes or 29 minutes apart depending on the route taken.

Distance might be one factor that could give OP a defense.

On the other hand, a name change might be a lot less costly than litigation.

 

[quincy]

I agree that a lawyer consult would be a good bet as the two businesses are 21 minutes or 29 minutes apart depending on the route taken.

Distance might be one factor that could give OP a defense.

On the other hand, a name change might be a lot less costly than litigation.

I think that a name change at the very beginning would be a very smart idea, before consumers start connecting the name with the company and before SteveBurman invests too much in advertising his business to the public. And a name change could put a quick end to the legal action being considered against Steve by the competing company.

Geographic location is one of several factors looked at when determining if one company's trademark is likely to infringe on another company's trademark. If the companies operate in different states and there is no consumer market overlap, there is generally no consumer confusion generated and no problem with the companies sharing a name. Likewise if the companies that share a name offer completely different goods or services (e.g., Dove soap and Dove ice cream peacefully coexist).

Two same-named companies operating in the same state and within a distance of 20 or 30 miles of each other, however - especially when both companies are in the auto care business - is likely to be an infringement problem for the second user of the mark.

SteveBurman should speak to an attorney in his area now for advice and direction and SteveBurman will want this attorney available if/when he is served with a trademark infringement complaint.