Do I have to change my company name?

[sa31]

Hi everyone, and thank you very much for reading through my message.

I live in California, and am having a question about a trademark.

For the past year I have had my DBA, fed tax ID# and some other stuff as well as a provisional patent under the name that I have my DBA under.
It turns out that there is ANOTHER small little company on the east coast that has their DBA under the same name as I do, which I have been told is totally legal and it's not a problem. Just like there are a few different "speedy plumbing" companies out there for instance.

I have a very large online presence, have sponsored events in my industry, have an online store and a great website.

I got an email a few days back from a company out east that has their DBA using the same name as mine is under also, they told me that they are in the process of trying to get the name trademarked so that I cant use it, and that though they can't yet "legally" tell me to change my company name, they wanted to make me aware that they are filing the trademark papers.

We both turn out to be in the same industry, on different sides of the country, both of us legally have DBA's, and have been using them for a while. My question is,... if they end up trademarking the name, do I have to do what they are saying and no longer USE the name for myself that I have legally been able to use just like them for a while now? We both would have been using the name legally, we both had the name approved for us when we got our respective DBA's on opposite sides of the country without knowing about the other, and the one difference being I have a MASSIVE online presence in our industry which I know doesnt amount too much legally more than likely.

But IF they end up getting a trademark, will I have to change my name even though I've had it since BEFORE they get theirs trademarked, which they still haven't done yet.

 

[Michael Wechsler]

They can't get a federal trademark if you oppose their filing. The reason for this nice email, I am sure, is because an examining attorney will do an online search and find your company using the same name. He will not grant nationwide protection for this company when you have a lawful right to use the name, at least within the boundaries of your own state.

I found this document on the USPTO web site (Patent and Trademark Office) which may help:

Law and Rules on Opposing a Trademark

15 U.S.C. § 1063(a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including as a result of dilution under section 43(c), may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 12 of this Act of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time for filing opposition. An opposition may be amended under such conditions as may be prescribed by the Director.

37 CFR § 2.101 Filing an opposition.
(a) An opposition proceeding is commenced by the filing of an opposition together with the required fee, in the Office.
(b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file an opposition, addressed to the Trademark Trial and Appeal Board. The opposition need not be verified, but must be signed by the opposer or the opposer's attorney, as specified in § 10.1(c) of this chapter, or other authorized representative, as specified in § 10.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii) are required for oppositions submitted electronically under paragraphs (b)(1) or (2) of this section.
(1) An opposition to an application based on section 1 or 44 of the Act must be filed either on paper or through ESTTA.
(2) An opposition to an application based on section 55(a) of the Act must be filed through ESTTA.
(c) The opposition must be filed within thirty days after publication (§ 2.80) of the application being opposed or within an extension of time (§ 2.102) for filing an opposition.