El Paso, TX asked in Copyright, Business Law and Trademark for Texas

Q: Can I send a cease and desist to someone who has a name similar to my company's even though my trademark is live

My trademark application is live and pending yet I recently realized someone with a similar name like mine, they just changed the last letter on the word, so instead of Y they replaced it with an E. So can I send a cease and desist even though my application is pending yet live? The other company sells the exact same goods as me.

3 Lawyer Answers
Floyd Edwin Ivey
Floyd Edwin Ivey
Answered
  • Trademarks Lawyer
  • Kennewick, WA

A: The use of a mark which is similar in sight and sound used for similar goods and or services is infringement. Is the other mark used for sale of similar goods and or services?

1 user found this answer helpful

Timothy John Billick
Timothy John Billick
PREMIUM
Answered
  • Trademarks Lawyer
  • Seattle, WA

A: Common law trademark rights start with your legitimate "use in commerce." I would need to compare the respective uses of the junior user and the senior user -- along with a relevant timeline-- in order to give you a full answer. But generally, you may have the ability to send a C&D letter if you already have valid rights to the name you wish to assert.

Allison Higgins
Allison Higgins
Answered
  • Trademarks Lawyer
  • Helotes, TX
  • Licensed in Texas

A: Hello. Great question. You very well may have a valid reason to send a cease and desist letter, but you may not. However, there are a few other things that need to be explored. First, you would need to determine if your goods/services and theirs fall into the same trademark class. Second, whoever used the mark first, regardless of registration, may have the right to use the mark.

For the most individualized answer, it is best to contact a licensed trademark attorney. They can do a complete analysis of the situation and draft a cease and desist letter if necessary.

Note, this answer does not constitute legal advice or create and lawyer/client relationship.

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