Trademark Confusion/Protection in Different States

Posted by Michael Shimokaji | Nov 11, 2018 | 0 Comments

QUESTION: Can another business in another state use my trademarked business name? I have a business in VA with a trademarked name. I just discovered another business in TX using the same name. My business started out doing what they???re currently doing, but has since evolved. Their business does what we started our doing. Because my business name is trademarked, are they allowed to use the name? I'm a dog trainer and behaviorist, but started out doing more canine-human fitness. I'm doing more training and behavior work, but have kept my company name. This other company does canine-human fitness. Is this infringement? I sent them a message, to which they responded by asking if someone was confusing their business with mine. But.. it's the same exact name and I spent a lot of $$ trademarking this name when I started my business nearly 5 years ago.

ANSWER: If you have a federally registered trademark, you may have the right to stop an infringer in another state. If you only have a state registered trademark, you may still have the right to stop an infringer in another state if you are also doing business in the other state and first used the trademark in the other state before the infringer.

About the Author

Michael Shimokaji

Michael’s expertise includes the strategic development of patent and trademark portfolios. He identifies those patents and trademarks that are valuable to his clients by providing them with a competitive advantage. Then, Michael obtains patent and trademark registrations in the US and abroad.

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