Someone stole my business name, now what?

Question

I've been using this particular business name since 2010 and without going into name specifics, the business is a bridal show, photography business and wedding business listing service etc. We have a catchy name that pertains to weddings, and our logo has a wedding ring and diamond in the logo. So anyway, I did a google search and noticed that there's someone in Sydney Australia that took our name, they have a diamond in the logo, they took the same domain but instead of .com they got .com.au extension. They're using the business as a wedding planning blog/service. I looked online and it appears they registered the domain and started a Facebook page, both in 2013. Years after we started our business.

So I have a LLC in Washington State with that business name as a DBA, and of course we pay taxes and all that good stuff. Being that this business is in Australia what options do I have? Do I need an international trademark or what's the best way to deal with this? Although we're in different countries, brides an other customers could easily be confused being that both of our businesses are wedding related.

Answer 1

When and if they try to penetrate your existing market, or to register their trademark in the USA, you MIGHT have a claim against them. Until then, all you have is a "locally known" business name, although you seem to suggest you are using the business name as a trademark or service mark.



Under US (and Australian) laws, the first to use a distinctive brand in commerce on particular goods or services has "priority" over anyone who comes later and starts using or tries to register a "confusingly similar" brand.



OTOH, a domain name is not a trademark, nor is it a business name. A domain name is a globally unique internet address identifier. Trademarks and trade names are "local" unless you have registrations that pioneer new frontiers for your offerings.



As mentioned, if they have swiped your creative works of original authorship in the imagery of your logo, that could be a copyright infringement, or at least the basis for contacting them about your superior rights. Unfortunately, within seconds, they could go ahead and file an application for registration of their brand in the USPTO, giving them a "leg up" on USA rights, other than where you are "actually doing business" under that brand.



So, looks like you may need to buy yourself some happiness by filing an application for a US trademark registration. It's $325 well spent on at least one class of goods or services, thus putting your brand into the official international record.



Come on back if you need more ideas about where to go for more information.



http://www.uspto.gov/trademarks

Answer 2

they're working in another country where you don't have your name registered & you don't do business. there is nothing you can do.



now if they've stolen original art work from you for their logo, you may have recourse there but if the art work of the logo is not yours then only the artist can complain about that.



btw: unless you have your name trademarked in this country businesses in other states would be allowed to use the same or similar name unless you could prove you have a history of practicing business in those states & their business could be mistaken for yours, creating confusion in the marketplace.

Answer 3

You did not have an international trademark and your business can not be seen as being in direct competition given they are in different countries.....so there is nothing you can do (anyway why are you worrying about it?)



Do you understand the difference between .com and .com.au? The first means the company is in the US, the second is that it is Australia....so you mean that not one company in any country can use that name despite the fact you cannot help anyone in those countries....?? You need a refresher on business law.

Answer 4

Since this business is already up and running and you don't have an international / Australian trademark in effect, you have no recourse.



Do you even have a registered trademark in the US? Remember trademarks are by specific categories = if you don't do wedding planning or have a wedding blog and you are a wedding show, photography and directory service = you probably aren't even in the same categories. Categories are very specific.