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Malicious Trademark Infringement

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I live in Colorado. About 5 years ago my boyfriend and I had a business together and we let it go. The business was registered but not trademarked then.

We are now broken up and I figured I would give the business another shot and started posting things on the Facebook business page. He then registered and trademarked the name with the state, under his name.

What are my rights to continue using the name? I am the one who did all the marketing, designed the website, logo, etc. and got people engaged. The only thing he did was be a sounding board for my ideas. I know he doesn't intend to do anything with the business other than to block me from what I already created.
 


quincy

Senior Member
The name of the business you and your boyfriend had together was its trademark. It was what identified the business and distinguished it from all others. That is what a trademark does.

Although state registration is generally necessary for a business to operate in a state, federal registration of a trademark is not necessary in the US. Trademark rights are gained through the use of the trademark in commerce, with the first user of the mark the presumed owner.

Because you and your boyfriend formed the business together - and I assume you did so with nothing in writing - you shared rights in the business and its assets (which includes the trademark). Letting the business dissolve as you did allowed either of you (or anyone else) the opportunity to use the name (trademark) you both originally chose.

You could fight over rights now - and it could be a costly fight because he has registered the trademark under his name - or you could give it up and develop another business under a different name with a different logo and make it all your own, which could be cheaper and easier in the long run.

I suggest you run all facts by an IP attorney in your area if you want a good idea of what your chances are of regaining the trademark and what it could cost to do so, this if you can't come to an amicable resolution with your former boyfriend.

Good luck.
 

justalayman

Senior Member
This all begs the question


Why were you operating a business without it being properly registered? If it was, and in your name, you could dispute his registration of the mark.

I wonder if you had, would he be the one attempting to argue he has rights to the company persona as well.


You could attempt to wrest the business from him but given it was a joint venture previously, I don’t see a compelling argument that he should divest himself from the business totally. If anything I could see it becoming s joint venture again. Unless you are willing to go that route, I suggest you heed Quincy’s advice and start your own fresh business.



As it stands, you have no right to continue to use the business name or trademark. He is the registered owner of both. He could sue you for infringement should you continue to use the business IP and representing yourself as being associated with thst business.
 

quincy

Senior Member
This all begs the question

Why were you operating a business without it being properly registered? If it was, and in your name, you could dispute his registration of the mark. ....
As a note, a sole proprietorship business does not necessarily need to register the business with the Colorado Secretary of State. All profits and debts would be in the personal name of the business owner.

If operating the business under something other than your own name, however (a doing-business-as name), the d/b/a needs to be registered - and this is apparently what the boyfriend has done.

The boyfriend may in fact have registered the name with malicious intent but there appears to be little for Denise to do that makes much financial sense.
 
This all begs the question


Why were you operating a business without it being properly registered? If it was, and in your name, you could dispute his registration of the mark.

I wonder if you had, would he be the one attempting to argue he has rights to the company persona as well.


You could attempt to wrest the business from him but given it was a joint venture previously, I don’t see a compelling argument that he should divest himself from the business totally. If anything I could see it becoming s joint venture again. Unless you are willing to go that route, I suggest you heed Quincy’s advice and start your own fresh business.



As it stands, you have no right to continue to use the business name or trademark. He is the registered owner of both. He could sue you for infringement should you continue to use the business IP and representing yourself as being associated with thst business.

I get what you are saying, however, I wasn't "operating a business" without proper registration. No money has changed hands, no website, no real marketing etc. I was posting re-posting blogs and asking questions to see if our followers were still interested. More like market research. I had no idea that he would stoop to this level. Now looking back at it, it just shows how desperate and little he is.

Thanks for the advice.
 

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