Accused of trademark infringement...

[Abbie]

I own a boutique and I received a "cease and desist" notification from the lawyer for another boutique based on trademark infringement. The owner has a portion of the name of my boutique trademarked. I formed my corporation and started my business in the said name prior to the date she trademarked the name. I'm hoping this is a valid defense. Before I chose the name of my store I searched trademarked names and nobody had the name of my store trademarked at that time. I guess in retrospect I wish I had trademarked the name first. Any advice on how to handle this would be greatly appreciated.

 

[Michael Wechsler]

Just because a lawyer sends a nasty C & D letter stating that you're an infringer doesn't mean anything. Without seeing the names involved I cannot comment on the strength or weakness of their case. Regardless, you may already have acquired at least common law trademark rights within your own state or area. You may also be able to challenge the validity of the trademark holder and may want to state that you will, based upon the fact that you have proof that you used this corporate name before the trademark holder. But... look up the trademark in the trademark database at the US Patent and Trademark Office and see when they claim first usage. Bottom line is that if you resist, you can see whether they give in and may even want to settle and buy out your usage of the name or just let it lie. You need to keep a straight, poker face in front of a professional - so you should probably speak to a trademark or IP attorney regarding the specifics of the case and the stance you can take. I've successfully backed up numerous attorneys claiming trademark infringement, at least 50% of the times the claims were absurd and designed to scare the uneducated layperson. Good luck to you....