Florida - Name conflict. Who wins?

[FL819]

Florida

Below is an example where three entities with different registration circumstances are using the same name in the same industry and same market. To date no party has filed a trademark for Florida Broken Cars. Which entity is more likely to be granted use of Florida Broken Cars?

08/01/2015 : FLORIDA BROKEN CARS LLC incorporates
12/22/2018 : FLORIDA BROKEN CARS LLC remains active with all annual reports filed

12/01/2014 : AAA AUTOMOTIVE LLC incorporates
02/01/2015 : AAA AUTOMOTIVE LLC files a d/b/a of FLORIDA BROKEN CARS with the Florida Department of State
09/01/2015 : AAA AUTOMOTIVE LLC is administratively dissolved for failure to file the annual report
12/22/2018 : AAA AUTOMOTIVE LLC remains inactive
12/31/2020 : FLORIDA BROKEN CARS d/b/a remains active and will expire approximately five years from the date recorded

02/01/2016 : BBB AUTOMOTIVE LLC incorporates
02/20/2016 : BBB AUTOMOTIVE LLC files a d/b/a of FLORIDA BROKEN CARS with the Florida Department of State
04/01/2017 : BBB AUTOMOTIVE LLC files the required annual report
12/22/2018 : BBB AUTOMOTIVE LLC remains active
12/31/2021 : FLORIDA BROKEN CARS d/b/a remains active and will expire approximately five years from the date recorded

Note: BBB AUTOMOTIVE LLC is a franchisee of another company that licenses the name "BROKEN CARS" to businesses in a number of states. The franchiser does operate a website with a directory that identifies their locations as follows. (eg. Alabama Broken Cars, Georgia Broken Cars, Florida Broken Cars) and the names and physical address of BBB AUTOMOTIVE LLC are listed underneath Florida Broken Cars in this directory. The franchiser does not have any registrations recorded with the state for "Florida Broken Cars".

 

[quincy]

Florida

Below is an example where three entities with different registration circumstances are using the same name in the same industry and same market. To date no party has filed a trademark for Florida Broken Cars. Which entity is more likely to be granted use of Florida Broken Cars?

08/01/2015 : FLORIDA BROKEN CARS LLC incorporates
12/22/2018 : FLORIDA BROKEN CARS LLC remains active with all annual reports filed

12/01/2014 : AAA AUTOMOTIVE LLC incorporates
02/01/2015 : AAA AUTOMOTIVE LLC files a d/b/a of FLORIDA BROKEN CARS with the Florida Department of State
09/01/2015 : AAA AUTOMOTIVE LLC is administratively dissolved for failure to file the annual report
12/22/2018 : AAA AUTOMOTIVE LLC remains inactive
12/31/2020 : FLORIDA BROKEN CARS d/b/a remains active and will expire approximately five years from the date recorded

02/01/2016 : BBB AUTOMOTIVE LLC incorporates
02/20/2016 : BBB AUTOMOTIVE LLC files a d/b/a of FLORIDA BROKEN CARS with the Florida Department of State
04/01/2017 : BBB AUTOMOTIVE LLC files the required annual report
12/22/2018 : BBB AUTOMOTIVE LLC remains active
12/31/2021 : FLORIDA BROKEN CARS d/b/a remains active and will expire approximately five years from the date recorded

Note: BBB AUTOMOTIVE LLC is a franchisee of another company that licenses the name "BROKEN CARS" to businesses in a number of states. The franchiser does operate a website with a directory that identifies their locations as follows. (eg. Alabama Broken Cars, Georgia Broken Cars, Florida Broken Cars) and the names and physical address of BBB AUTOMOTIVE LLC are listed underneath Florida Broken Cars in this directory. The franchiser does not have any registrations recorded with the state for "Florida Broken Cars".

Are you one of the businesses? If not, what is your interest?

Trademark law centers on consumer confusion. If consumers are, or are likely to be, confused as to the origin of the goods/services being offered as a result of a dual use of the same business identifier, any one of the trademark holders can seek to stop the other use or uses of the name.

There are several factors looked at when determining which trademark holder has superior rights to the name. In the US, the first to use the name in commerce is the presumed owner of the mark - although this is a rebuttable presumption.

Federal registration of a trademark is not a requirement in the US but registration helps the trademark registrant to prove first use and senior rights.

 

[LdiJ]

Are you one of the businesses? If not, what is your interest?

Trademark law centers on consumer confusion. If consumers are, or are likely to be, confused as to the origin of the goods/services being offered as a result of a dual use of the same business identifier, any one of the trademark holders can seek to stop the other use or uses of the name.

There are several factors looked at when determining which trademark holder has superior rights to the name. In the US, the first to use the name in commerce is the presumed owner of the mark - although this is a rebuttable presumption.

Federal registration of a trademark is not a requirement in the US but registration helps the trademark registrant to prove first use and senior rights.

I totally agree but will add that my personal opinion is that any fight would be between the first company mentioned and the last company mentioned, as the middle company is inactive.

 

[quincy]

I totally agree but will add that my personal opinion is that any fight would be between the first company mentioned and the last company mentioned, as the middle company is inactive.

None of the companies are inactive.

 

[adjusterjack]

Methinks this is a homework assignment as a search doesn't bring up business names that include the words "Florida Broken Cars" although there is a company called Broken Cars LLC in Florida but its establishment date of 1/12/17 doesn't correspond with any of the dates listed in the original post.

https://florida.intercreditreport.com/company/broken-cars-llc-l17000010043

And, of course, the years 2020 and 2021 haven't arrived yet.

 

[quincy]

Methinks this is a homework assignment as a search doesn't bring up business names that include the words "Florida Broken Cars" although there is a company called Broken Cars LLC in Florida but its establishment date of 1/12/17 doesn't correspond with any of the dates listed in the original post.

https://florida.intercreditreport.com/company/broken-cars-llc-l17000010043

And, of course, the years 2020 and 2021 haven't arrived yet.

If it's a homework assignment, FL819 should know that there is no easy answer to his question as worded.

 

[FL819]

The example provided included fictional business identities to protect the privacy of the businesses involved. The circumstance described however is real and the business registration you cited is not affiliated with the example given.

You will eventually see another question that was posted by me where I am asking for advice on changing the tax designation and name of an entity. This question is related to that question and neither are homework assignments.

Purely a coincidence the name given matches an active entity in Florida.

 

[FL819]

None of the companies are inactive.

What do you mean none of the companies are inactive? The example given reproduces the real world circumstance. At least one of the entities, AAA Automotive, was administratively dissolved for no annual report and the status of that business indeed remains inactive.

 

[quincy]

Thanks for the clarification. It was smart to use fictional names.

Trademark disputes are often not easily resolved as many factors are looked at. Even long-existing businesses can lose rights to their names or have these rights limited to a small geographic region if another company with the same name becomes famous, for example.

I recommend you have the real names and circumstances personally reviewed by a trademark attorney in your area, if you are one of the three existing users of the name.

It is, as a note, smart to create for your business a trademark that stands out from all of the rest by being unique. Made-up words combined with creative marketing can result in a better known and more successful company than one whose trademark is easily forgettable.

Good luck.

(Unless it was a typographical error, you said the d/b/a was active for the middle company)

 

[FL819]

Thanks for the clarification. It was smart to use fictional names.

(Unless it was a typographical error, you said the d/b/a was active for the middle company)

Thanks. I learned long ago the consequences of disclosing real identities in forums. The fictional names were necessary.

Yes, the d/b/a remains active with the middle entity because they deserve a lifespan of five years from the date of registration. However, the entities llc registration is inactive because of administrative dissolution: no annual report.

What's the significance of an active d/b/a that belongs to an inactive entity?

 

[quincy]

Thanks. I learned long ago the consequences of disclosing real identities in forums. The fictional names were necessary.

Yes, the d/b/a remains active with the middle entity but the entities llc registration is inactive because of administrative dissolution, no annual report. I wonder what the value is of an active d/b/a that belongs to an inactive entity?

A business can exist outside an LLC.

And trademark rights can exist without registration of the mark.

It is the USE of the mark as an identifier for goods/services that creates trademark rights.

The trademark can even go through periods where it is not used - as could be the case when a company is reorganizing or revising a product or having financial difficulties or going through bankruptcy.

There is, in other words, a lot to consider when determining trademark rights.

 

[FL819]

I understand a business can exist without active registration but that doesn't mean the business is free from legal implications. If you operate a business outside the scope of the registration, you risk losing protections you might have otherwise enjoyed.

Your business is then non-compliant although it would not shock me to learn of name or identity disputes that are ruled in favor of the unlawful or non-compliant business entity.

 

[quincy]

I understand a business can exist outside of a registration but that doesn't mean the business is free from legal implications. If you operate a business outside the scope of the registration, you risk losing protections you might have otherwise enjoyed.

You may also then be operating unlawfully since you failed to maintained the required registration with the state. Anyone can run a business but the operation alone doesn't make it legally compliant.

Although it would not shock me to learn name or identity allowances are still ruled in favor of unlawful or non-compliant operations.

The specifics are necessary to determine if the company operating outside the LLC has violated any laws.

You still have another or other businesses using the same name, though, so there are still trademark issues even if there is one less business to worry about.

 

[FL819]

I believe Florida Statute F.S. 607.1421 prohibits a business from engaging in commerce after administrative dissolution for no annual report other than activities related to dissolving of the business itself.

This should mean a business that has been dissolved with an active d/b/a should be prohibited from using that d/b/a in the course of any future business conducted under the scope of the inactive registration.

I am surprised the Florida Department of State allows the d/b/a to remain active when the registering entity has become inactive instead of revoking the d/b/a registration as a result of not having filed the annual report.

 

[quincy]

I believe Florida Statute F.S. 607.1421 prohibits a business from engaging in commerce after administrative dissolution for no annual report other than activities related to dissolving of the business itself.

This should mean a business that has been dissolved with an active d/b/a should be prohibited from using that d/b/a in the course of any future business conducted under the scope of the inactive registration.

I am surprised the Florida Department of State allows the d/b/a to remain active when the registering entity has become inactive instead of revoking the d/b/a registration as a result of not having filed the annual report.

I don't have enough facts to comment on that company.

And I am not sure it matters.

You still have at least one company with the same name. I suggest you concentrate your energies there.

Good luck.