QUESTION: I have been doing business for years under a specific name that has never been trademarked. Now I am receiving communications from someone who claims they have purchased a domain, llc and are federally trademark patent pending under the same name. They are telling me I must cease using this name or they will sue me. Am I protected under Common Law Trademark laws or can they legally sue me for using the name?
ANSWER: You can have trademark rights without registering your trademark. Those unregistered rights are sometimes referred to a common law trademark rights.
The mere ownership of a domain name does not necessarily mean the owner uses the domain name as a trademark and, therefore, does not necessarily mean the owner has trademark rights in the domain name.
Similarly, the mere registration of a limited liability company does not necessarily mean that the owner uses the LLC name as a trademark and does not mean the owner has trademark rights in the LLC name.
Even if the owner uses the domain name and/or LLC name as a trademark, whether trademark infringement exists and therefore you must cease using your name is dependent on a number of factors.
One, if you were using your trademark before the LLC owner, you may have superior trademark rights to the LLC owner. That means you can continue to use your name.
Two, if you and the LLC owner sell significantly different products or services, that may allow you to continue using the name.
Three, if you and the LLC owner sell in different geographic markets, that may allow you to continue using the name.