The Same Business Name - Not Really

[Tedi17]

Last year I registered my business nam: Black Butterflies Photography

Today, I received a comment on my website from someone claiming that she's own the name for 12 years and would like me to email them.

I did Google her name is Black Butterfly Photography in Springfield, MO. Which I don't really think that matters, does it? Not to mention, I'm registered under Black Butterflies Photography and she's in a different state.

Please tell me I'm safe. Should I contact her?

Tedi

[Shelby Lane]

Is her name trademarked?

[Tedi17]

Not really sure, she ask me to contact her. It's really two different names.

[Shelby Lane]

It is similar enough that if she has it trademarked, she could ask you to change it. Googled, though, and I doubt that she has TM'd it.

[HotHolly]

Its too close. You usually cannot use a trademarked name in whole or in part. Check the national trademark registry.

[HotHolly]

Shelby! Stop typing at the same time as me! lol!!!

[Shelby Lane]

Jinx -- I think you owe me a coke.

[CaptainTom]

If you have DBA it really doesn't preclude anyone else from using your EXACT name. Some Counties will not let another business register a DBA if that name is already in use, and some don't care.
If she hasn't Trademarked her name ( it is highly unlikely that she has ) she has no legal recourse against you. And you have no recourse against her either.

Contact her and see what she wants. Maybe she would just like to open communications in case someone contacts you by mistake, and vice versa.

[Tedi17]

I sent her an email....so we wait.

[BabyHopes]

I'll wait with you, mainly because I'm curious about what she has to say.

[Tedi17]

Originally Posted by BabyHopes

I'll wait with you, mainly because I'm curious about what she has to say.

I emailed her last Monday, Jan. 19th ... haven't heard back from her. Maybe she's researching or leaving it alone. I will keep everyone posted.

[Aric C. Hoek]

If you absolutely must have this name....

1) Become a member of The Professional Photographers of American and ask them what your rights are.

http://www.ppa.com

[Jeff Lane]

I just asked my old friend TESS (the Trademark Electronic Search System at www.uspto.gov) and she said that the only similar trademark registration that is still live in any sense is one for "Black Butterflies" for use in connection with educational services for African American girls, by a company out of Utah. As far as a federally registered trademark is concerned, then, it doesn't look like this will be her beef. Let us all know what she says, if she ever gets back with you. In the meantime, you really should consider consulting with a trademark lawyer if her response looks like she wants to make trouble or convince you somehow to abandon your company's name. Preventing a problem in this case (assuming there are not a lot of facts I don't yet know) would be a pretty inexpensive solution. Trademark litigation, on the other hand, is extraordinarly expensive, even by lawyer standards. (I've personally been involved in several lawsuits that have gone well north of $100,000 in fees -- good for me, bad for the client.)

A NOTE FOR EVERYONE WITH A UNIQUE BUSINESS NAME -- federal registration with the Patent and Trademark Office is CHEAP AND EFFECTIVE at protecting your name and business identity, and preventing someone else down the road from making these kinds of demands against you. When you decide on a name, SEARCH FOR IT ON WWW.USPTO.GOV. If you accidentally start doing business using a name that is arguably confusingly similar to a name somebody else has already registered, you and your banker will both regret it.

One other aside -- "registering" your name with the Texas Secretary of State or your county clerk on their assumed name registers, or even in getting your company incorporated, is NOT the same thing, and offers you no protection for this particular situation. They are two separate kinds of "registration" for two entirely separate purposes.

[ldelacruz]

Don't worry about it because you are in a different state. Let her do the research and if she has recourse she has to notify you formally. You would have to be deceptively trying to pass your company as theirs. Hence Cisco, Sysco, Hilton Furniture, Hilton Hotels.

[brad]

Originally Posted by Jeff Lane

A NOTE FOR EVERYONE WITH A UNIQUE BUSINESS NAME -- federal registration with the Patent and Trademark Office is CHEAP AND EFFECTIVE at protecting your name and business identity, and preventing someone else down the road from making these kinds of demands against you. When you decide on a name, SEARCH FOR IT ON WWW.USPTO.GOV. If you accidentally start doing business using a name that is arguably confusingly similar to a name somebody else has already registered, you and your banker will both regret it.

Well, cheap is a relative term, I suppose. We have a registered trademark .. it cost us a bit up front to do all the proper searches and registrations.. and just wrote the USPTO a check to renew... but its a worthy expense.

Its also a PITA to keep it from being diluted.