Q: Can a company use a different name than their registered business name in their advertising?
2 companies, same NJ town, similar names (names changed for privacy).
Company #1 - XYZ Electric. They hold both Electricians & Home Improvement Contractors license under the name XYZ Electric. They don't have a registered DBA. Co #1 was in business before co #2.
Company #2 - XYZ Remodeling (uses tm symbol). They hold a Home Improvement Contractors license.
Customers weren't confused about the names being similar because the descriptions were different (Electric vs Remodeling). Both companies have positive reviews and referrals.
Out of the blue, co #1 started to advertise using the name XYZ Home Contractors. They didn't claim that name (it's still available), didn't change their name on their licenses, nor register the new name as a DBA. With this change in advertising, co. #2 referrals became confused and some contacted co #1 by mistake.
Can #1 legally advertise with a name that's not theirs? They ignored polite requests to stop. Is there any recourse?
A:
If company 2 trademark is not registered with state or USPTO then you’re likely out of luck because the marks practically need to be identical. If it is registered then it obviously bodes well for co2. With that being said, there are a lot of grey areas in the law and speaking with an attorney would surely be your best option.
Keep in mind that IP law is mostly a federal issue, so you don’t need assistance from NJ lawyers exclusively.
Hope this helps and feel free to contact my firm for a free initial 30-minute consultation anytime.
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A: With regard to the business question, keep in mind I am a Florida licensed attorney and not a NJ licensed attorney. In Florida, they would have to register a trade name for it to be protected, not to use it in general. Therefore it seems like your only grounds are likely in the IP arena (see my previous answer).
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A: The marks do not need to be practically identical. The standard is likelihood of confusion and company 2 can show actual confusion which helps. Also, there are common law trademark rights based on use. If you are company 2 (which I’m assuming based on the last sentence) you may want to consider getting assistance from a lawyer to do a cease and desist letter.
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