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Large corporation stealing my established trade name

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#1
What is the name of your state? Arizona.

In 2015, I started a small business called Calibre, as an LLC and filed for the trade name with the Secretary of State, which I was granted and have maintained ever since. I recently learned that a very large corporation has set up shop here very close to me as a foreign corporation. We are essentially direct competitors as we do advertise and seek clients for the same services -- just maybe not on the same scale, I am only one man. They have started doing business as Calibre Systems. Calibre is a very uncommon spelling of the more common version caliber, so I find this to be a direct infringement upon my rights.

What should I do? I already have clients who are extremely confused when they hear that there is another Calibre out there providing the same consulting services, but this company has extremely deep pockets from what I can tell.
 


#2
What is the name of your state? Arizona.

What should I do? I already have clients who are extremely confused when they hear that there is another Calibre out there providing the same consulting services, but this company has extremely deep pockets from what I can tell.
You're going to need to see an attorney who practices in the area of trademark law. You have a potential problem that you may be the infringing party. The U.S. Patent and Trademark Office (USPTO) has a number of trademark registrations for firms using the word Calibre in some fashion. It is not quite as unique as I think you thought. In particular, there is a nationwide company called Calibre Systems, sometimes just known as Calibre, which has a trademark filed for Calibre along with the logo that goes with it. The link I provided takes you to that registration information. That registration was filed in 2010. While trademarks are established by use in commerce and not by registration, the registration would indicate that the other company has used the name Calibre in commerce before you started in 2015. Note that the company did not have to register with the state to establish its mark. You really need to do, at a minimum, a search on the USPTO trademark registration system before you select a mark you want to use to ensure that someone else is not already registered with it. And ideally you'd have a trademark attorney run the search since a more thorough search involves more than just a word search of the USTPO web site. Indeed, in this case a quick Google search of the name would have revealed to you the existence of this company. In any event, you need to run the facts regarding the other company's trademark filing and use, what you do, and the mark you have past a trademark attorney to see where you stand. If the attorney says you are the one at risk of infringing you may need to change your name.
 
#3
Hmm, thank you for that insight. For some reason, and it escapes me now until I have had my coffee, I was reasonably sure that I had done a TESS search. They weren't always called Calibre, and unfortunately it is that Calibre Systems that I am talking about. I'll have to do some more research it appears, but perhaps I can ask it another way.. if two John Does in two separate states both start a company called John Doe, Inc. it is whoever registers the trademark nationally first that would win the rights, no? Or would it come down to whoever started the company first? Wouldn't this be something that would have come up when they went to register the name themselves to do business in Arizona? Thank you again for your help.
 
#4
If an entity registers a trademark on the federal level, entities already using the mark but not federally registered are not automatically restrained from using the same mark. It does limit the unregistered user to their current market though.

In other words;

If you had established calibre as a trademark first, even if it was not registered, you would have a right to continue to use that mark within your already established market sector and geographical market. You would not be able to expand your market into the others territory or market sector.

If the calibre taxing matters spoke of that is the competitor you are concerned with, since they registered the mark in 2010, it would appear they would have rights to the mark, including in your territory since you did not establish your use until 5 years later.
 

quincy

Senior Member
#5
Hmm, thank you for that insight. For some reason, and it escapes me now until I have had my coffee, I was reasonably sure that I had done a TESS search. They weren't always called Calibre, and unfortunately it is that Calibre Systems that I am talking about. I'll have to do some more research it appears, but perhaps I can ask it another way.. if two John Does in two separate states both start a company called John Doe, Inc. it is whoever registers the trademark nationally first that would win the rights, no? Or would it come down to whoever started the company first? Wouldn't this be something that would have come up when they went to register the name themselves to do business in Arizona? Thank you again for your help.
In the US, the first user of a trademark is the presumed owner of the mark. Federal registration of the mark is not required to establish these rights.

However, if one of the users of the mark registers the mark with the USPTO, the registrant can prevent others from using the mark except perhaps in the geographic region where the first user has used the same name. The holder of the registered mark becomes the presumed owner.

After 5 years on the Principal Register, the registered trademark is incontestable (immune from legal challenges). See 37 USC section 1065.
 
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