My brother has a small business in Louisiana that sells fountains named "Fountains of Youth". He has been opened about two years. He recently broke up with his girlfriend and to be spiteful she trademarked the name, even though she has no intentions of opening a fountain store, and is now demanding he cease use of "her" name. What can he do?
2007-03-20 04:18:39 · 3 answers · asked by traceystewart1964 2 in Politics & Government ➔ Law & Ethics
how did she trademark the name? By filing an application with the secretary of state, or the U.S. Patent and Trademark Office? either way, her supposed "trademark" is not sufficient.
Trademark rights are based on USE, not on registration. And the people who have priority are those who USED in commerce first, not those who registered first (with some limited exceptions). Sounds like your brother has first use (unless his gf can contend that she owned the business with him) and thus she cannot prevent him from continuing his use.
BUT see a trademark lawyer. If this trademark issues (state or federal, although federal is MUCH more serious), she could restrict the scope of his use to a small geographic area and really hurt his business. And, of course, there are many manty more facts that can affect this analysis. Only a licensed attorney (who's experienced in trademark law) can really help your brother. Believe me, the few hundred dollars he may have to spend is worth it--because his business name is worth it.
(P.S. Itsme's answer is wrong -- you can't change your name slightly and still win -- because tradmark infringement is based on "likelihood of confusion" -- whether consumers would be confused as to the source of products or services. So exact matches are not necessary.)
2007-03-20 04:24:28 · answer #1 · answered by Perdendosi 7 · 0⤊ 0⤋
Change the name and trademark it himself.. He could also use Fountain of Youth... A tiny change is still legal to use.. Who is the business license listed under???
2007-03-20 11:24:53 · answer #2 · answered by Its me!!! :) 4 · 0⤊ 0⤋
If he can show (prove through documents/witnesses) that he was using the mark in commerce before she was, and that her registration was in bad faith (including that she never intended to use the mark in commerce), he can get a court to void her registration.
This would require filing a civil law suit, under whatever unfair competition laws exist in his state. Consult a licesend attorney in that state for details on how to proceed.
2007-03-20 13:11:07 · answer #3 · answered by coragryph 7 · 0⤊ 0⤋