Q: A trademarked company named Diamond Cosmetics demands that I change my business name.
They say I have to drop the name Diamond from my name because I am operating under their business name and they don't want any confusion because we both sell cosmetics, lip gloss, false eyelashes etc. I think it's bogus because "diamond" and "cosmetics" are common names. There are so many other companies using their exact name so why should my company be a target? The attorney tried to persuade me into changing my name, branding, and domain by New Years 2021. The patent attorney asked how soon do I think that I'll be able to sell off my products? I'm just thinking, " Wow. So I'm just supposed to start over because of a name?" I really don't think it's fair. This is going to cost me being that I just bought labels, packaging, business cards, and my logo for my business recently. I need to know are they legally correct or not?
A: Trademark infringement is similarity in sight or sound for similar goods or services. If the other company has a registered trademark for DIAMOND COSMETICS in connection with makeup, cosmetics, etc., then they are most likely entitled to exclusive, nationwide use of the mark, and your use of the name constitutes infringement. You may have a priority claim in your geographical location if you began using the mark before they did, but I highly recommend consulting a trademark attorney to go over the facts of your specific case. A trademark attorney can explain your options, correspond with the other company's attorney to reach a resolution, and help you to protect your brand. You can work with a trademark attorney licensed in any state, not just the state where you are located. Feel free to contact me at jml@carmodymacdonald.com if you'd like to discuss the matter.
A: The viability of a trademark infringement claim generally depends on many factors including likelihood of confusion, geographical scope of use and registration, priority of use/first to use, owner's failure to adequately and timely enforce trademark rights, etc. It is important to consult with a trademark attorney regarding your situation because each case is different.
A:
As the others have noted, you have a priority claim for a certain geographic location, but unfortunately you may have to rebrand. This is why is it so important to do a trademark search and file for trademark registration when you start your business. The cost of a trademark registration is significantly less than rebranding costs.
I suggest contacting a licensed trademark attorney to discuss your options moving forward.
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