Good Afternoon!

I am currently in a dispute with someone who started using my company name 7 years after I started and incorporated my business.

When I found this person in NY (I am in MI) was using the .net version of my website with the same name (but not incorporated), I consulted with a lawyer who informed me the trademark had been abandoned and that I should apply for the registration and, upon being approved and assigned the trademark, that I could stop her from using the name.

Well, the trademark is now mine, the lawyer who gave me the advice is no longer practicing locally and I'm in a bind. In consulting another trademark attorney, he told me that since I got the trademark after she started her business and she's practicing in another state, I don't have any legal grounds to stop her from using my company name. Since our industry and client base is worldwide (being virtual), I feel I should be able to stop her from trading on my unique name and hard earned reputation.

She has falsely used other organization's logos on her website, claiming she was a member and, as I'm a member of the same organization, I spoke with the owner/moderator who has been asking her to stop using her logo since she's NOT a member. After I sent her a "cease & decist" letter she responded and wants to continue using the company name. When I pointed out that she's in breach of this organization's "Code of Ethics" she replied "Oh, I'm not a member anymore and I need to remove their logo from my site".

As she's highly unethical, I don't want to offer her a licensing agreement to continue using the name and can't afford $10K to take her to court. Does anyone have any suggestions or similar experiences?

Thank you!

Monica :-)
Instant Assistant, Inc.®

What a horrible situation! I've never experienced this but would suggest consulting another lawyer to see if you receive the same advice. I looked at the website of this person and was appalled to find out that she operates in my local area. I don't know her and had not heard of her before this, but I will certainly steer clear.

Good luck!

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Margaret
Helping You Build Your Empire

Monica,

Unfortunately I do not think you have recourse to stop her since you registered the trademark after she started her business. I looked at the .net address and see she is a notary so she probably has everything she needs to run under that name registered with her state.

Even if you stopped her from using the name you cannot stop her from using the domain name. If you Google Instant Assistant there is someone in another state using the name too so I do not think you are going to be limited to only one instance.

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Lee Drozak

I would consult with more attorney, see if one would take your case on a contingency basis, and if you win, get her to pay the court costs. If she's unethical, she's going to smear you in the process. Speak with an attorney about a possible disclaimer saying you are not affiliated with her or her web address. Best to disassociated yourself with her as best as you can until you can get her shut down (if ever). I would also gobble up all the available domain names: .biz, .edu, .co, etc., to keep her from getting her hands on them.

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&rea and Associates, LLC
"Dedicated to Helping Small Businesses Compete"

Thank you all for your wonderful advice! I will be consulting another attorney, as I'm having a REAL hard time letting this go!

So glad to be a part of this group and have colleagues like you on my side!

Have a great day and don't eat too many Paczki!

Monica :-)