cease and desist with a trademarked name

[Rachel B]

I received a cease and desist today from photographer on the other side of the country, My business name/her business name are the same and it turns out she has the name trade marked.

Is there anything I can do? or do I have to re brand? I am in the US, thanks.

[friesr]

Is the business name trademarked in her state only or with the fed?

[friesr]

You can search here for the fed
http://www.uspto.gov/trademarks/index.jsp

[hairy_moth]

I just did a quick google search for "Trademark Conflict." On this page ( http://www.ivanhoffman.com/personalnames.html) I found:



The third concern, which is again related but brings us closest to the rule regarding descriptive marks, is that preventing a person from using his name to denote his business may deprive consumers of useful information. Maybe “Steve” is a well-known neighborhood figure. If he can’t call his bar “Steve’s” because there is an existing bar of that name, he is prevented from communicating useful information to the consuming public. [citations omitted]


You should be fine. But if they press it, you may have to appear in court.. which is far away.

[Rachel B]

her's is a federal registered name.

[jonwhite]

http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=77750483
Word Mark RACHEL CLARE PHOTOGRAPHY Goods and Services IC 041. US 100 101 107. G & S: Photography services. FIRST USE: 20080501. FIRST USE IN COMMERCE: 20080501 Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 77750483 Filing Date June 2, 2009 Current Filing Basis 1A Original Filing Basis 1A Published for Opposition October 13, 2009 Registration Number 3731293 Registration Date December 29, 2009 Owner (REGISTRANT) Tucker, Rachel INDIVIDUAL UNITED STATES 5955 Central Avenue Riverside CALIFORNIA 92504 Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "PHOTOGRAPHY" APART FROM THE MARK AS SHOWN Type of Mark SERVICE MARK Register PRINCIPAL Other Data The name(s), portrait(s), and/or signature(s) shown in the mark identifies "Rachel Clare Rhien Tucker", whose consent(s) to register is made of record. Live/Dead Indicator LIVE

[friesr]

I did find it on the fed site. It was filed June 2, 2009. You could contact a trademark atturney and see if you have a case if you can establish you were established prior to her filing.

She probably wants your domain name for her own use and this is the way to force you to give it to her.

Seems like you dont have a lot of options.

[Rachel B]

Cool, thanks, I will switch my name to my first and last, I had been doing research about using a shorter domain name anyway...
I checked and its available as a domain name and not trademarked.
Now what would have happened if I was living in a different country...I am moving to Germany next year, would she have been able to persue this then?

[OdiN1701]

Also, note the person who registered the mark is "Rachel Tucker" and not "Rachel Clare"

[friesr]

If you are thinking of changing, you can probably sell her the domain for what it will cost you to reprint your business cards, invoices, etc and setup a new website. Sure will be less expensive than litigation on both parties.

[GW2]

Did you do business as "Rachel Clare' before her filing? Do you have any documented proof? Seems to me that would be a defining factor.

[friesr]

Did you do business as "Rachel Clare' before her filing? Do you have any documented proof? Seems to me that would be a defining factor.


I totally agree, but lawyers charge by the hour. Either this other gal has deep pockets and is ready to fight it out or just bluffing. She spent 300+ on regestering the trademark. Was the C&D from a lawyer or the other gal?

[stcurtis]

While I have almost no trademark experience, I can tell you that from a purely legal perspective she has established that she first used that name in commerce in May 2008, yet you owed the domain prior, I'd assume for business purposes, a point you'd have to be clear in making.

If you wished to persue it, I'd find a trademark attorney and file an infringement claim based on prior use and establish that she trademarked the name only to establish control of the domain and reputation that you rightfully established and owned prior to her filing. Further, most would argue that she's trademarked the service mark as depicted in her filing, and the exclusive right to use "Rachel Clare Photography" is not granted by the trademark, but instead the exclusive right to use the mark as filed, e.g "Rachel Clare Photography" mixed case black block lettering on a white background with no other unique or distinctive surrounding. Your page, on the other hand, is distinctly different and the mark(s) appearing theron are unique and distinctive, and not in conflict with the registered mark in question.

It's expensive, but possible, to establish that you are not required to comply with her cease and disist. I'd venture a guess that the letter is from her, not from an attorney.

[asysin2leads]

I would shorten your domain like you want anyway and charge her 6 figures for the use of your current domain. If she won't pay, then I would leave your current domain intact and leave it as a re-direct page to your new domain. If her legal name isn't Rachel Clare and yours is, as well you have registered the domain prior to her using that name, then IMHO, she has no case and it's going to cost her a king's ransom for you to cave.

[carguy4471]

I would shorten your domain like you want anyway and charge her 6 figures for the use of your current domain. If she won't pay, then I would leave your current domain intact and leave it as a re-direct page to your new domain. If her legal name isn't Rachel Clare and yours is, as well you have registered the domain prior to her using that name, then IMHO, she has no case and it's going to cost her a king's ransom for you to cave.

A domain name and business name are two seperate, unrelated things. Even if you have to legal basis in keeping your business name, you can keep your domain name. The trademark she holds doesn't entitle her to a matching domain name in any legal sense at all whatsoever. If you would like, you could offer to sell it to her, but if she doens't want to pay for it then just keep it. If you choose to, which you DO NOT have to, make a shorter domain name, I would keep your current domain as a redirect.

Make no mistake though, even if you do have to change the name of your business based on her trademark, you DO NOT have to give up your domain. It is a perfect opportunity to use it as a little leverage.

Federal trademark laws do not apply in other countries. Should you choose to keep your business name, it is unlikely she would have you in court before your intended move date. So long as there are no subpeanas issues prior to moving out of country, there is nothing she could do.

[Karl Johnston]

That's weird, isn't your state supposed to do a name check for you? We have that when filing for a business number, here.

[tomd]

Did you do business as "Rachel Clare' before her filing? Do you have any documented proof? Seems to me that would be a defining factor.

her url was registered April 2008, although in GB.

[asysin2leads]

A domain name and business name are two seperate, unrelated things. Even if you have to legal basis in keeping your business name, you can keep your domain name. The trademark she holds doesn't entitle her to a matching domain name in any legal sense at all whatsoever. If you would like, you could offer to sell it to her, but if she doens't want to pay for it then just keep it. If you choose to, which you DO NOT have to, make a shorter domain name, I would keep your current domain as a redirect.

I am fully aware of that. You are saying precisely what I just said.

[dovaka]

you could easily win this since its clear you were using the name before she registered it but even if you just want to shorten your name and not go threw all the hassle i would either charge her a arm and a leg for the domain literally at least 10k or jsut have to redirect to your new site. keep in mind people are still going to go to your old site for a long time and not know how to get to your new site

[tomd]

The OP's URL was clearly registered before the trademark, however it may matter if the business/web site was in GB or the US and when. In other words, did she operate the business under that name in the US prior to June 2009?

[Patrick]

Very true about the domain name. There is quite a bit of business of buying potentially valuable domain names for future sales too.

[Rachel B]

Thanks guys,
I decided to change my name, for no other reason than I was thinking about doing it anyway....I am keeping my domain name though, It has a redirect to my new site which is much easier to remember :)

[CliffordPhotography]

I only read a few post, but it looks like one I read stated it...

Business names and Domain names are 2 totally different things. As long as you own the domain name, no one can do anything about it. Just make sure you renew in time so it doesn't disappear.

Well now that I read the rest, it looks like you got everything squared away the way you want it.