Trade/Service Mark Infringement?

[readytoscream]

What is the name of your state? Texas

The name of our business is "Texas Inkslingers", and has been since Nov. 23, 1993. At the time, "inkslingers" was not a common word, and in the following 12 years, we have built a quality reputation under the name "Texas Inkslingers" that is known in several states.

Our main stay of business is custom design tattooing, followed by flash design tattoos, body piercing, custom sign painting, and jewelry sales.

In the state of Texas, we have the right to the "assumed name"/DBA "Texas Inkslingers", and a REGISTERED state Trade/Service Mark is pending.

It came to our attention recently that there is a business within 55 miles of us that recently was bought out, and the name was changed to "Texas Ink Slingers" (Yes, the spelling is SLIGHTLY different). This business advertises as a sign & graphic business, with custom designs. I found this by doing a websearch for our name.

We have had several calls recently that at the time were strange, we would answer the phone, "Texas Inkslingers, may I help you?" to be met with, "Is this the 'Texas Inkslingers' that does tattoos this time?" We would talk about it afterwards, but never gave a thought that there was someone else in the area using our name. When calling for directory assistance in the area, the operator will give you both options to choose from. Our customers from out of state, or out of the area could be easily confused by this.

Do we have the right to do a cease and desist on the "competing" business? If so, what would be the best way to do it, preferably without a lawyer? (Money is limited, we are not a large corporation by any means.)

ETA: I did come across this in the unfair competition Texas laws.....will it help us any:

Texas cases have emphasized that an intentional misrepresentation is not required for this law to be violated. Any representation that is misleading is considered a deceptive trade practice under Texas law. For example, the following are specifically unlawful:


Causing confusion or misunderstanding regarding the source or sponsorship of goods or services

Using deceptive representations or designations of geographic origin in connection with goods or services

 

[Help34Friend]

Sounds like you have a case!

From the definition you posted, readytoscream,...

It sounds like you have a case. The state department where you registered your company name should have an area--or contact number--where you can file a complaint against the other company using a way-too-similar name on the grounds that it does cause confusion.

Your evidence of this could be the fact that the telephone information service gives out both numbers when someone searches for your business name.

You shouldn't need an attorney for this, since the fact you need to register your business name with the state, and there is a prohibition against use of similar business names which cause confusion.

You don't need to sue....yet. File your complaint with your state department of "business registration" or whatever they call it. That agency should give you instructions on what you can do if the newer business refuses to change its name. You just have to ask--after all, that's what government agencies exist for: to help The People.

 

[readytoscream]

Unfortunately, I think it is moving more towards a "need to sue". I contacted the Texas Sec of State Corporations Division, and was told to go ahead and send the "Cease and Desist". I did this last week, and got confirmation of it's receipt on Monday the 12th. The way the letter was worded, they have until the 22nd to cease use of the trademark.

Since then, the owner of the other business has called every day, sometimes as much as 3 times a day. The first few days, he called outside business hours, and did not leave a message - I know he called due to caller ID. On Wednesday, he called during business hours, and reached my husband. My husband told him that he would need to speak to me as I was in charge of those aspects of the business. The gentleman did not leave his name (I did already know it at that time however) but knew when I would be in. As of Thursday/yesterday when I still had not heard back from the gentleman - I'll call him "John" (not his real name) - I called his place of business and got no answer or answering machine. I called again this afternoon/Friday and got John on the second ring. When I identified myself to him, he started stuttering and then told me he was on the other line and would call back in a few minutes - this was at 3:00 p.m. I had pretty much given up on him calling back, when at 5:30, he did just that.

He told me he had been talking to his attorney, and was refusing to cease and desist use of the name, at the advice of his attorney. I asked him if he understood that even if our name hadn't been registered, there were legal routes I could take. I then informed him that it is however a state registered trademark (It is finalized since the last time I posted). This is when he tried to tell me that our two businesses are nothing alike - they are in several aspects - and that he was not in our "area". Again, this other business is within 55 miles of us. I asked him again if he was going to stop use of the name, to which I was told a definate "No. Due to the fact that I have never heard of you, I don't believe that you really have been using this name for the period you say you have." (We have documentation going back to the beginning - such as state licenses, cancelled checks, business contracts, old phone directories, etc..) I asked if he understood that we would go through legal channels, he said he did, and was prepared to fight all the way to "defend his right to use the name". I politely told him that I was getting off the phone.

I really would appreciate any help/support/advice that anyone can give me at this time. While we really can't afford a lawyer, it sounds as if we may have to hire one anyway. If any of you know anyway to avoid this step, please let me know!