Is highlighting the term “Pest Control” after “Comprehensive Care” too close to “Comp

[Crazydirthead]

Washington State:

I registered my business in 2010 as Comprehensive Care LLC as I had started doing work for property managers in my area doing pest control and work, pretty much anything that needed to be done at a residence. Pest control was my most profitable and as such, that is what I spent my time on. I recently had a booth at my local home show at which I focused on the pest control side of my business. As such I made banners and fliers that said Comprehensive Care on a line with my logo and below it said Pest Control in large letters as well. I then received a cease and desist letter. Another local company named Comprehensive Pest Prevention Inc was trademarked Comprehensive Pest Prevention since 2005. I wasn’t aware of this at the time of registration (really) and have now spent 3 years marketing my name. We share the same market, and offer the same basic pest control, although that is only about 50% of my business gross. Is this letter a scare tactic or is it legitimate?

 

[Crazydirthead]

Question got cut off

Looks like it was cut off, here is the question. Is highlighting the term “Pest Control” after “Comprehensive Care” too close to “Comprehensive Pest Prevention”?

 

[HomeGuru]

The answer is yes and it really does not matter what you think. The company that has the name has a legitimate complaint.

 

[Crazydirthead]

The answer is yes and it really does not matter what you think. The company that has the name has a legitimate complaint.

That is what I was afraid of after the research I've done. I wish I would've known pest control was the way I'd be going when I started. So now my question is, can I continue to use the name Comprehensive Care, If I don't put pest control after it? It will obviously still be a pest control service provider though. Thoughts?

 

[HomeGuru]

No you can't. Or actually you can and fact the wrath of the other company.

 

[quincy]

The letter you received from Comprehensive Pest Prevention could have been sent out of a legitimate concern that consumers will be, or already have been, confused by the similarity in business names. Your Comprehensive Care with the addition of Pest Control IS awfully close to the other company's name, and the fact that you both operate in the same area and offer the same service could result in a consumer believing your company is their company (or vice versa).

Trademark owners are responsible for enforcing ownership in their marks. If they don't police the marketplace to stop infringers, their rights in a mark could be lost to them. And it does appear you could be infringing on their mark, even if unintentionally.

It is possible (maybe not probable) that the letter is just a scare tactic, with the trademark holder hoping the letter will spur you into changing the name of your business without any legal action necessary. The other company may have no intention of suing.

Because I can see how consumers might be confused by the two similar names, made more confusing when you add the "Pest Control" to your registered name for advertising purposes, I suggest you consult with an attorney in your area. The attorney can personally compare the companies (their names/logos/dates of establishment) and advise you on how best to respond to the letter based on this review of the facts.

Good luck.


edit to add: The terms "pest control" describe a service and cannot be protected under trademark law. In other words, pest control companies can say they are pest control companies. It is the fact that both your company and the other company are "comprehensive" pest control companies that could cause or has caused the confusion.

 

[Crazydirthead]

The letter you received from Comprehensive Pest Prevention could have been sent out of a legitimate concern that consumers will be, or already have been, confused by the similarity in business names. Your Comprehensive Care with the addition of Pest Control IS awfully close to the other company's name, and the fact that you both operate in the same area and offer the same service could result in a consumer believing your company is their company (or vice versa).

Trademark owners are responsible for enforcing ownership in their marks. If they don't police the marketplace to stop infringers, their rights in a mark could be lost to them. And it does appear you could be infringing on their mark, even if unintentionally.

It is possible (maybe not probable) that the letter is just a scare tactic, with the trademark holder hoping the letter will spur you into changing the name of your business without any legal action necessary. The other company may have no intention of suing.

Because I can see how consumers might be confused by the two similar names, made more confusing when you add the "Pest Control" to your registered name for advertising purposes, I suggest you consult with an attorney in your area. The attorney can personally compare the companies (their names/logos/dates of establishment) and advise you on how best to respond to the letter based on this review of the facts.

Good luck.


edit to add: The terms "pest control" describe a service and cannot be protected under trademark law. In other words, pest control companies can say they are pest control companies. It is the fact that both your company and the other company are "comprehensive" pest control companies that could cause or has caused the confusion.

I appreciate your thoughts Quincy, that helps a lot. could you please expand on your edit, or send me a link to read on it myself?

 

[quincy]

A link? You can go to the United States Patent and Trademark Office website: http://www.uspto.gov (perhaps read Section 1052 of the Lanham Act).

 

[HomeGuru]

OP, you would be facing a costly lawsuit from a claim to stop using the name to loss of profits.

 

[quincy]

Should the other pest control company sue Crazydirthead for trademark infringement or unfair competition, damages awarded will depend (or awards usually depend) on the actual harm the other pest control company can prove (profits made by Crazydirthead or losses suffered by Comprehensive Pest Prevention), and on whether the infringement was willful or not.

A likely result of any suit would be a court order that prevents Crazydirthead from using his trademarked name (possibly entirely, possibly just with the "pest control" tag). Profits and losses are often difficult to demonstrate.

There are enough questions raised by the facts presented here that a personal review should be done by an attorney in Washington. I am thinking that Crazydirthead is not in a great position to defend his use of his name for a pest control business, though, especially if the other pest control business has had their name registered since 2005.