Trademark Owner's Rights?

[Portobella]

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

My mother sold a business that includes the use of my trademark, which was officially registered after the sale of the business. I recently visited the business and they're using my trademark improperly, adding things to the menu that doesn't fit the trademark brand without my permission, and doing many sloppy things with the brand that is diluting the trademark. I'd like to send them a cease and desist letter for improper use of the trademark, but does my mother's sale of the business imply that they can use the trademark in any way they want? Where do I stand legally? Any advice is appreciated.. I'm extremely frustrated!

(The problem is that I didn't have a proper licensing agreement with them for the use of the trademark. Does this mean I have no rights? Doesn't registering a trademark come with some implied rights?)

 

[Zigner]

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

My mother sold a business that includes the use of my trademark, which was officially registered after the sale of the business. I recently visited the business and they're using my trademark improperly, adding things to the menu that doesn't fit the trademark brand without my permission, and doing many sloppy things with the brand that is diluting the trademark. I'd like to send them a cease and desist letter for improper use of the trademark, but does my mother's sale of the business imply that they can use the trademark in any way they want? Where do I stand legally? Any advice is appreciated.. I'm extremely frustrated!

(The problem is that I didn't have a proper licensing agreement with them for the use of the trademark. Does this mean I have no rights? Doesn't registering a trademark come with some implied rights?)

If they were first using the trademark in commerce then the business may actually have superior rights, despite your registration of the trademark. Please wait for others who are more knowledgable than I to post.

 

[justalayman]

Is this trademark used with businesses other than the one your mother sold?

 

[Portobella]

Trademark

We were actually using the trademark first, then sold that business with permission to use that trademark with it. There is no other locations currently for the trademark.

 

[Zigner]

We were actually using the trademark first, then sold that business with permission to use that trademark with it. There is no other locations currently for the trademark.

Was the business using the TM?

 

[justalayman]

We were actually using the trademark first, then sold that business with permission to use that trademark with it. There is no other locations currently for the trademark.

A trademark is an identifier of the business and as such, part and parcel of the business unless the business is specifically sold without the name.

When did you register the mark and when was your registration approved?

As it stands not only do you likely have no right to prevent them from using the name, they may be able to prevent you from using it. If nothing else you most likely have no right to claim exclusive use of the mark. Your contract with them will have a great bearing on the matter but what you have posted so far suggests you have not taken action to retain the rights to the mark.

 

[Portobella]

Trademark

Yes, we were using a common law trademark when we sold the business and registered it after.

 

[Zigner]

Yes, we were using a common law trademark when we sold the business and registered it after.

The problem is the use of your pronouns. I think that "we" weren't using it, rather, "the business" was using it. As such, and as stated above, the TM likely was sold with the business.

 

[Portobella]

Trademark

The business was sold around June 2015, and we filed for registration around July, and it got approved in April.

 

[Portobella]

Trademark

Ok I really should elaborate. My mother didn't 'sell' the business- she transferred the rights to run the business to somebody with bad intentions and he worked behind her back to create a separate corporation with his name with his own dba and corporation name, to try to take over the business completely -- which don't include my trademark. The very simple contract she and the operator have in between them DOES include the name of my trademark, but it's misspelled.
Does this make the situation better?

 

[Zigner]

Ok I really should elaborate. My mother didn't 'sell' the business- she transferred the rights to run the business to somebody with bad intentions and he worked behind her back to create a separate corporation with his name with his own dba and corporation name, to try to take over the business completely -- which don't include my trademark. The very simple contract she and the operator have in between them DOES include the name of my trademark, but it's misspelled.
Does this make the situation better?

No, it makes it worse since it is OBVIOUS that the TM was supposed to be transferred with the business...I would suggest that you consult with a local attorney. Best of luck to you.

 

[Portobella]

Thank you Zigner

 

[justalayman]

The business was sold around June 2015, and we filed for registration around July, and it got approved in April.

I wouldnt be surprised to see the owners of the business challenge your registration of the mark.
One problem is you were not using the mark in commerce when you applied for the registration. How did you prove use of the mark for the purpose of the application?

If you have just filed for registration your mark, it has not been granted yet. see here;

http://www.uspto.gov/trademark/trademark-timelines/section-1a-timeline-application-based-use-commerce

There has not been enough time for the registration process to have been completed.


Eta: now that I see the true story is nothing like what was suggested, I too, suggest finding an attorney to review your situstion.

 

[Portobella]

Trademark

We were operating the business with the trademark for about a year before transferring the business. (I still maintain the website and social media pages) The trademark registration was finalized in April 2016, and we filed right after transferring the business.

 

[Zigner]

We were operating the business with the trademark for about a year before transferring the business. (I still maintain the website and social media pages) The trademark registration was finalized in April 2016, and we filed right after transferring the business.

Right - the TM goes with the business. Then you turned around and tried to grab up the TM after you had already transferred it.