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Other business using my company name


#1

Orchidians,

Tonight I learned that another business is using my company name on
the web. My company is Jewelry for the Journey and I am a very small
jewelry company. I completed the research for the LLC and paid for
the designation in 2002 using an attorney in Boston, MA. I have paid
for the domain name on time every year since 2001. My web site is
managed by 3 Island Press in Maine. Our accountant files our income
tax statement every year. Our attorney files an annual report each
year.

I discovered this by looking at a site rating web businesses and saw
that someone posted a note that Jewelry for the Journey was not
prompt in delivery. However, my orders have always delivered as
requested.

The other business using Jewelry for the Journey on the web sells
beads, specializing in mother’s bracelets and pregnancy bracelets.
The owner’s address is Apex, NC. She began publishing a Jewelry for
the Journey Newsletter in April 2008. Is LCSW a licensed social
worker?

Is there an Orchid member who has encountered this problem? My first
thought is to have our attorney write a letter and ask that she stop
using Jewelry for the Journey on her web to advertise her newsletter
and sell her beads. However, maybe before I run up $800 in legal
fees, I should instead call her? or send a registered letter on my
letterhead? send her on how to register a legal company
name?

I would be most grateful for any suggestions of members who have
experienced this or know someone who has. Gratefully,

Mary Atwater
Chief Design Officer
www.jewelryforthejourney.com


#2

Mary,

It appears that your professional advisors missed the one step that
would have given you the exclusive rights to use the name ‘Jewelry
for the Journey’ on a national basis. A trademark (which includes
trade names) is a type of intellectual property that may
theoretically be established through its use in the marketplace. I
say “theoretical” because unless your trademark is Registered, it is
difficult to establish your exclusive right to use the trademark. In
the USA, trademarks are Registered with the US Patent and Trademark
Office.

When you established your LLC in your state, the search that was
undertaken regarding the use of that name was only for that state’s
business registration process. It had nothing to do with using that
name exclusively on a national or international basis. It doesn’t
mean that you can’t use the name nationally, just that you don’t have
exclusive rights. Additionally, the registration of a web site does
not grant you exclusive rights to use the name for every purpose. It
just gives you exclusive use of that web site.

It may still be possible for you to register this name. However, it
may not make sense. First, there is the cost of registration. The
last registration that I did was in the mid 90’s and the filing fees
and attorney fees exceeded $1,000. That filing search was clean (no
other businesses were found to be using the name I wanted). I applied
for a different trademark in the late 80’s and that search resulted
in multiple businesses using the name that I wanted and it took
extensive time and money to clear the conflicts. Of course, after you
own a registered trademark there are costs involved any time that you
have to defend it.

The good news? You have the web site. Don’t lose it!! Otherwise,
setting the record straight whenever possible will help. Also,
differentiate yourself (you’re Jewelry for the Journey in Maine, not
NC). Otherwise, I don’t know of any magic solutions to your problem.

Good Luck,
Jamie


#3

Personally I would immediately get the lawyer to write the letter. It
will have far more impact. But it’s unclear from your statement
whether you actually registered the name. Creating an LLC is not the
same thing as registering a name. Also, it’s my understanding
(BINLSDBAIS—means: but I’m no lawyer so don’t believe anything I
say) that registering your name is a state by state issue so even if
you did register it in Massachusetts it may not protect you
elsewhere. But I could be way off the money on this. You need to
speak to an attorney about this.

Daniel R. Spirer, G.G.
Daniel R. Spirer Jewelers, LLC
www.spirerjewelers.com


#4

Business names are registered with the state so you can easily have
different businesses with the same name in different states.
Trademarks however are nationally registered and there was a
trademark of the phrase “Jewelry for the Journey” (trademark #
76495341) registered by what appears to be your company. But you
have abandoned it according to the USPTO database. You may want to
get with your attorney about this. With the Trademark abandoned you
don’t have any real leverage with a business in a different state.

James Binnion
James Binnion Metal Arts


#5

there is a tool called - whois- that will tell you who is using the
registered domain. Look it up, then call her and explain your
corporation precedes her use of your businesses name, etc.and if
your attorney did what he/she was paid for and webmaster and IT
person did their jobs too she must cease using your name
immediately-period. BUt this is what a simple query showed me :

whois record removed

So it looks like a registrant in Spain has the domain rights
predating 2002… for midcoast. com- You should do a bit of research,
and see if this is you If it is NOT your holding and info, then YOU
are using someone elses domain and business name. …Your IT person
should be responsible to have checked this before you used it on the
internet- and your attorney and corporate executive or COO, and the
stock issuing administrator should have checked this out before the
first account, or d. b. a. was created…! Both within the US and
with ICANN ( Internationally, ) you have to resolve the rights to the
domain name first, and if it is a common trendy phrase(i. e.
organizations like journeywomen.com, cancer survivors groups,
self-help terminology etc, are all in the same class of "journeying"
and as such it’s time to inspect your domain registration,
resolution, branding, tradename, trademark, etc…and register
everything uniformly. If your CO. precedes all others you have some
course of action legally. If not, a call to the person using the
name you are also using, if hers was proceding your use of it should
be a friendly toned we have an issue conversation…Legal rights
depend on the tradename ownership and their creation, registration
and incorporation both on the E-COMMERCE AND BRICK AND MORTAR
platforms! This is not uncommon with people inexperienced in internet
business regulation setting up a website, without knowing about ICANN
registry and other domain name resolution DB’s and trusting that
because no one in your area is using it, it is not only available,
but not in use globally… somewhere… The burden is on you to prove
your ownership pre-dates all others and that the EIN is registered in
your state and with the IRS, and lastly that the name is unique and
yours to use- which I]m afraid it may not be from what i saw with a
quick two second check of some facts… Best regards, and good luck,
rer


#6

Mary,

legal disclaimer: note in advance: I am not an attorney, and could
be full of cr-p. that said:

I have been effectively enforcing copyright issues on my own behalf
for some time now, maybe 20 years.

some of the copyright enforcement stories are what you would expect:
one guy uses a photo, we contact him to say stop, and he does. this
is much easier as the years pass, as we now have a track record, of
public record, showing enforcement 20 or so times. I had to make
such a call to a would be customer Friday of last week; the matter
was resolved within 2 hours, no big deal.

some of the stories, you just have to shake your head at: employees
of a fortune 25 company, stealing photographs for a project! and
then publishing them! once we realized that, yeah, they were actually
doing this, we simply contacted the chief counsel of their lobbying
firm in washington, dc, pointed out that “there was simply no way
that they could be ignorant of the issues”, and the photograph, and
the employees, were removed within the afternoon.

So, to stand up for yourself on this Internet issue, we will go
through the easy way, and the hard way. try the easy way first,
however you have to be prepared, mentally at least, to do the hard
way if the easy way does not work.

  1. easy way. LCSW is usually a licensed social worker. these are
    caring people, medical providers, sounds like she is trying to help
    out her patients. probably is unaware of your right to use the
    names. probably will be horrified to learn that she has caused you
    any discomfort. Maybe even, eventually, will want to sell some of
    your stuff. we have a story about that situation too.

  2. send her an email, a day or 2 later, call her, and simply say"
    hey, knock it off." you might even suggest another name for her to
    use : “mothers care beads” “maternal awareness” whatever

however, if #1 and #2 don’t work, say, within 36, maybe as many as
48 hours, then you do it the hard way:

a) use the "whois’ website to find out who the administrator of
their website is.

b) next, go after the website service provider - they will react
quite promptly to an issue, if it is indeed a legitimate copyright
issue. most of the service providers, somewhere in the fine print of
their contract, allow them to cancel service, i.e,e, web hosting,

c) the website provider does not want to be involved in this,
especially if you are right. we have another war story, again
corporate counsel, again a telecom company, in the middle of merger,
who agreed with us, and canned the offender who refused to pull down
some photographs.

long story short: stand up for yourself, in most cases all it takes
is a phone call or an email; the offender probably simply is unaware
of your name, and will remain unaware until you tell them.

your results may vary

Warm regards
Mark Zirinsky, Denver


#7

Hello Mary,

I have another person using a very similar company name. In fact
there are, or were at least two other “Walker Metalsmiths” in the
US. One is a man who does sculpture restorations in California. No
"s" in his Metalsmith. I/we are plural. The other was a sheet metal
fabrication company somewhere in the midwest. Neither is doing the
same thing as me. I am incorporated in New York State, which gives
me some protection. I believe that a sole-proprietor DBA is only
exclusive in your own county in NY unless you register the name as a
trademark, in which case you have national and even some
international protection.

I don’t let the other Walker Metalsmiths bother me. I have talked to
James Walker in California about it and we agreed that we were both
OK with the situation. In fact we did have links to each other to
help ease any confusion. I just checked and see that my webmaster
omitted our link to him on the most recent homepage. But your
situation could be a problem if the other Jewelry for the Journey is
racking up bad reviews. These things can eat you up emotionally. I
would suggest that unless the other one starts to show up on the
first page of Google searches with negative that you
just ignore it. If her legal name is really “Journey” I expect you
would need a legal department as well funded as McDonalds to make her
change her name.

Stephen Walker


#8

I have also experienced another business using my company name. I own
an art gallery, the other business sells Stripper and club clothing.
They opened a year ago, and I’ve been in business for almost 7
years.?? I also registered the name with the State Secretary as I was
told that I had to do,? I had our attorney write a cease and desist
letter, but that did no good – even if we sued, there would be no
guarantee that we would win. The other business continues to use MY
name. Oh, and the other business is located less than 3 miles from
where our building is.

Hope you have better luck than I did,


#9

Hello Mary

The usual disclaimers here, not a lawyer, don’t even play one on TV.
When I registered my DBA name many years ago with the state, I
remember some conversations about state name registration, trade
names, national names and so on. The bottom line (that I remember)
was that I was only registering for my state. Not a big deal
pre-internet. Now it is a different story, every small operation can
now have a national presence. Protecting a name on a national bases
is costly. The sad story is that it can be more cost effective to
change a name rather than protect an existing, but not easily
recognizable name which you do not have a clear history of national
use and protection

Marlin.


#10

Having said my piece on contacting a lawyer, now let me put
something else out there. NO ONE has my personal name. Granted my
name is a little unusual (certainly it’s not John Smith), but most of
you who decide to use a “name” for your business, particularly a
"cute" name, or a play on words name, or something else that you
think is unique should remember that someone, anywhere else in the
world, can come up with the same name (same thing with new design
ideas—maybe someone in Sweden really did come up with that same new
killer design idea you thought you had). But your personal name is
harder to replicate. No one else in the world has my exact name in
the exact phrasing I have it in: “Daniel R. Spirer Jewelers, LLC” and
is also in my business. Perhaps many of you should think about
simply using your own names instead of some phrase that could be
copied somewhere else. Don’t think it will happen??? Sure it will. I
have spent untold hours coming up with headlines to use in my
advertising and no matter what I come up with someone else sooner or
later uses the same thing. Did they copy me? Nah, probably not. The
problem is there are only so many play on words you can make with
words related to jewelry. Same thing for company names. There are
only so many play on words you can make for the name of your company.
Sooner or later someone else will come up with the same thing. And
more often than not it isn’t because they copied yours.

Daniel R. Spirer, G.G.
Daniel R. Spirer Jewelers, LLC
www.spirerjewelers.com


#11

I must agree with Daniel, of “Daniel R. Spirer Jewelers, LLC”. When I
was coming up with a company name, I put a lot of thought into it,
and researched the pros & cons of different ideas. In the end, there
were two main reasons I came up with the name you see below,
“Designs by Lisa Gallagher”. One, it’s not at all restrictive. I
don’t just do jewelry, I’ve never done just ONE thing, and I don’t
want a name that restricts what I do. Second, the name is already
mine! No legal anything required, no searches, nada. It’s already
mine and I can use it. Simple. Now, of course that doesn’t help the
initial query, and I’m afraid I am of no help there. I did, though,
just want to add my two cents in regards to the idea of name
choosing, should anyone who’s trying to come up with a name in the
near future be reading this thread in great interest.

Lisa
Designs by Lisa Gallagher


#12
Of course, after you own a registered trademark there are costs
involved any time that you have to defend it. 

You WILL loose it if you do not renew the registration & defend it!
Look at “Kleenex” it has become a generic term, “Comfort Fit” for
inside round shanks is almost generic.

Mark Chapman


#13

KIMBERLY-CLARK WORLDWIDE will no doubt be amused to know that Mark
Chapman has declared their well defended trademark, “Kleenex,” a
generic term! I doubt the courts give much weight to Mark’s
declaration either.

Comfort Fit has so many different registered owners for different
classes that I’d suggest it’s registration by ??? (I didn’t take the
time to figure it out) for jewelry or rings was a waste of time and
money (except for the attorney paid to do it, of course).

Anyone can look up US trademark registrations in seconds at
http://www.uspto.gov/ then Trademarks then pick the search (TESS)
option, etc.

James E. White


#14

Part of this is exactly the reason my then fiance (now husband) and I
chose our company name, Dreaming Dragon Designs. Neither of our last
names is reliably pronounceable or spell-able (really, trust me!),
but we didn’t want to restrict ourselves to just jewelry, as we also
have the gift/curse of being multi-talented. We did a reasonable
amount of searching, and found that the closest thing was “Double
Dragon ____” but no “Dreaming Dragon”. We were going for something
that evoked fantasy, as our work often incorporates fantasy, Sci-fi,
tribal and Celtic themes, including dragons. It’s worked fairly well
so far.

LJ


#15

Orchidians,

Thank you all for your comments and suggestions regarding my post
Other Business Using My Company Name. An excellent resolution is in
the process. The resolution was directed in a most unusual way. An
Orchid member in Cary, NC contacted the business in Apex, NC who was
using my company name. Neither the business in Apex, NC nor I knew
the Orchid member in Cary, NC. She quietly stepped into the
situation, in the best Orchid tradition of sharing knowledge, with a
suggestion to help.

The business in Apex, NC has agreed to contact her web manager and
change her marketing phrase and newsletter name so that it will not
be the same as my legal company name and my domain name. She had no
idea that she had chosen words that would create this situation. All
is now well.

I want to say a special thank you to the Orchid member from Cary, NC
for her help. What a great example of “the kindness of a stranger.”

Gratefully,

Mary Atwater
Chief Design Officer
www.jewelryforthejourney.com


#16

Just my non legal First a question: Is the other company
in the same business as you? It does matter. My father was a partner
in a small optical scanning company some years back. Their company
name was “Sears”. And the Sears as you know sent them a C&D order. It
was thrown out because there was no infringement on the business.
They were not competing in anyway. Now that’s not to say that it
wouldn’t be different today but most businesses I believe are created
by the state and there is no national name checking done when the
business is created. Just an FYI