Trademarked Business Name - A Few Questions

Business By mrswendel Updated 9 May 2011 , 1:54pm by michaelSmith

mrswendel Posted 5 May 2011 , 9:47pm
post #1 of 24

Hi all,

I received an email today from a woman advising that she has a U.S. trademarked name with incontestable status for bakery goods and that I needed to cease and desist using my name or they would be proceeding with legal action. I have no problem with doing that if I have to, but I have a couple of questions. (I have changed the actual names)
1. She is located in the U.S. whereas I am in Canada.
2. The name she has trademarked is "Sweet Cakes" whereas my name is "Sweet Cakes by Sue".
I have looked online and there are a number of cake related businesses with "Sweet Cakes" in their names.
Like I said, I have no problem with changing my name if I have too, but I just wanted to check out the legalities first.
Thanks!

23 replies
jason_kraft Posted 5 May 2011 , 10:07pm
post #2 of 24

What's the serial number for her trademark? I just did a quick trademark search and I don't see any live trademarks for "Sweet Cakes" covering bakeries.

http://tess2.uspto.gov/

mrswendel Posted 5 May 2011 , 10:34pm
post #3 of 24

Hi Jason,
I changed the names since I didn't want to have any personal issues pop up.

jason_kraft Posted 5 May 2011 , 10:40pm
post #4 of 24

OK, so have you verified that this person's trademark actually exists and covers the indicated scope? Just how different is this person's trademark from your business name? When was the trademark established, and when was your business established? Without the correct information it will be difficult to give useful advice.

In some cases, it may be perfectly OK to have two businesses using the same trademarked name in different locations, as long as there is little likelihood of confusion. If both your businesses are retail bakeries that serve a limited area and do not overlap, you might have a strong case for continued use of the name.

http://www.blogtrademark.com/archives/778

patrice2007 Posted 5 May 2011 , 10:46pm
post #5 of 24

OMG!!! I got the same email yesterday. I don't have a problem telling you the name. My email was using the name "Sugar Bliss" and so of course I went searching. The person even went as far as listing their trademark number. So I looked it up.....the number they listed didn't match the trademark.....is this someone just trying to bully people? I am having my attorney friend look into this for me. I will keep you posted.

jason_kraft Posted 5 May 2011 , 10:52pm
post #6 of 24

TM#77585411 and reg #3726457 do cover the scope of bakery goods, but their business is retail only and they do not serve customers beyond the Chicago area. The filing date is Oct 3, 2008, so if you used your name in commerce before that date you might have a good case for concurrent use, especially if you operated in good faith (i.e. you didn't specifically try to piggyback off the existing trademark).

This is not really a case of bullying, as trademark owners are required to defend infringing use of their trademarks or risk losing the trademark. This trademark owner does seem to be a little more aggressive than most though.

patrice2007 Posted 5 May 2011 , 11:02pm
post #7 of 24

That is the same person I received my email from yesterday. The reg # is the same and it was from Chicago. When I looked up the number.....it came up with a item from 1973. Again, my facebook name is different from theirs which is "Sugar Bliss Cakes".

mrswendel Posted 5 May 2011 , 11:10pm
post #8 of 24

Wow, Jason, you really now this stuff! She did provide me with her TM # as well, and literally the difference between the 2 names is hers doesn't have "by Sue" after it. As far as location, she is in FL and I am in Ontario, Canada.
Funny that we would both receive the same type of thing at the same time.

jason_kraft Posted 5 May 2011 , 11:20pm
post #9 of 24

mrswendel - if she is in FL it sounds like we're talking about two different trademarks here. C&D letters are actually relatively common, especially when dealing with relatively common names.

costumeczar Posted 5 May 2011 , 11:38pm
post #10 of 24

Jason is right, though, that if you were using your business name before she trademarked it then you could challenge her trademark in court and she would likely not be able to enforce anything.

If you're in Canada and she's in the US I doubt that anyone would take the issue seriously. It's not like you're competing in the same marketplace, so the chance of clients confusing the two businesses is pretty low.

Sounds like this is ont he same level as the issue of someone trying to copyright a smiley face and telling other people not to use it.

CupQuequito Posted 5 May 2011 , 11:38pm
post #11 of 24

Since we're talking about this... I'm a new business. Very different name. Is it something I should look into? I mean, trademarking my name?

Sami3000 Posted 6 May 2011 , 12:03am
post #12 of 24

For her to contest your name at all being in 2 different counties she would have to have an international trademark (like Coke), U.S. trademarks mean diddly in Canada. She may just be trying to cover her bases since since if you do not defend your trademark you can lose it and if she found you on facebook she may not have realized where you're located or just may be ignorant of all the rules.

jason_kraft Posted 6 May 2011 , 12:12am
post #13 of 24
Quote:
Originally Posted by costumeczar

Sounds like this is ont he same level as the issue of someone trying to copyright a smiley face and telling other people not to use it.



If you've gone through the expense of trademarking a name, you are probably planning on expanding your use of the name to a national or international level (via internet sales, wholesale, etc.), so C&D letters to businesses sharing your name may not necessarily be frivolous.

jason_kraft Posted 6 May 2011 , 12:13am
post #14 of 24
Quote:
Originally Posted by CupQuequito

Since we're talking about this... I'm a new business. Very different name. Is it something I should look into? I mean, trademarking my name?



If there are no existing trademarks held by others on your name, and you don't plan on expanding beyond your local retail market, a trademark is probably not necessary.

jason_kraft Posted 6 May 2011 , 12:20am
post #15 of 24
Quote:
Originally Posted by Sami3000

For her to contest your name at all being in 2 different counties she would have to have an international trademark (like Coke), U.S. trademarks mean diddly in Canada. She may just be trying to cover her bases since since if you do not defend your trademark you can lose it and if she found you on facebook she may not have realized where you're located or just may be ignorant of all the rules.



That's true, trademark protection does indeed end at the border. I would have thought that the US and Canada would reciprocate on IP protection but after doing some research it looks like that's not the case.

mrswendel - unless this person has a trademark in Canada or an international trademark they have no legal standing to force you to cease and desist. There is a provision allowing US trademark holders to backdate their Canadian trademarks to the US filing date, but that expires 6 months after the US filing date (which has already passed).

costumeczar Posted 6 May 2011 , 12:49am
post #16 of 24
Quote:
Originally Posted by jason_kraft

Quote:
Originally Posted by costumeczar

Sounds like this is ont he same level as the issue of someone trying to copyright a smiley face and telling other people not to use it.


If you've gone through the expense of trademarking a name, you are probably planning on expanding your use of the name to a national or international level (via internet sales, wholesale, etc.), so C&D letters to businesses sharing your name may not necessarily be frivolous.




Not necessarily...A lot of people get bad advice from attorneys and/or the internet about trademarking/copyrighting everything and they don't know if what they're doing is necessary. She may have no intention of expanding, but she thnks that she needs to trademark and copyright everything in sight.

mrswendel Posted 6 May 2011 , 12:50am
post #17 of 24

Thanks everyone. I responded to her email advising that I was not located in the U.S. and if she had an international or Canadian trademark to please provide that information and I would be happy to comply with the law. She responded with a very curt email stating that she would forward my response to her attorney. Guess we will see what happens.

Paperfishies Posted 6 May 2011 , 6:34am
post #18 of 24

Ok, so when is it necessary to trade mark the name of your business?

When is just registering the name with your state sufficient?

How much cost is involved with trademarking?

dchockeyguy Posted 6 May 2011 , 1:26pm
post #19 of 24
Quote:
Quote:

That's true, trademark protection does indeed end at the border. I would have thought that the US and Canada would reciprocate on IP protection but after doing some research it looks like that's not the case.

mrswendel - unless this person has a trademark in Canada or an international trademark they have no legal standing to force you to cease and desist. There is a provision allowing US trademark holders to backdate their Canadian trademarks to the US filing date, but that expires 6 months after the US filing date (which has already passed).




Jason is right on this. Only International trademarks will cross a border to another country. I used to administer a system that tracked trademarks and patents several years ago. It's a lot of work to keep up with these things for big companies.

That said, I also think there might be a slight problem with their C&D request, but don't quote me on this. There's some legal foothold if you're name has something pretty common in it that can't be enforced. For example, Sour Patch Kids is trademarked, but just the name Sour Candy is harder to enforce, especially if your name is Sue's Sour Candy, or something similar. However, if your name is identical, then the C&D is legal.

I'm curious, to those of you who have gotten the letter if it came from the company or a lawyer? Does the name at the end have ESQ, JD, or anything similar to that?

mrswendel Posted 6 May 2011 , 1:56pm
post #20 of 24

Mine came from the woman who owns the company. It is a generic letter addressed to my email address (not my personal name)....the same way I used to do letters when doing a mail merge. When I look up her business name on Facebook, I get 30+ cake businesses using that name or similar like mine. I'm guessing that we probably all got the same letter.

dchockeyguy Posted 6 May 2011 , 4:42pm
post #21 of 24
Quote:
Originally Posted by mrswendel

Mine came from the woman who owns the company. It is a generic letter addressed to my email address (not my personal name)....the same way I used to do letters when doing a mail merge. When I look up her business name on Facebook, I get 30+ cake businesses using that name or similar like mine. I'm guessing that we probably all got the same letter.




Most likely. She obviously is doing this on her own then. But since you're in Canada, nothing to worry about. Also, e-mailing a C&D isn't the way to do it. You have no proof that the person actually received the document.

jason_kraft Posted 6 May 2011 , 4:53pm
post #22 of 24

I would be surprised if she actually has an attorney, she's probably hoping people will cave and change their name rather than risk a legal confrontation. Good work OP on holding your ground on this.

costumeczar Posted 6 May 2011 , 4:59pm
post #23 of 24

And like I mentioned before, if any of those other businesses have been using the name longer than she has, she really can't force them to stop using it. They could take her to court and show that the use of the name was established before she came along.

michaelSmith Posted 9 May 2011 , 1:54pm
post #24 of 24

Mrs. Wendel,

Firstly Trademarks are governed by Countries. A US trademark is not valid or contestable in Canada unless the owner of the trademark has registered it in Canada as well. If she has then it might be an issue because they are similar sounding names.

Whats needs to be borne in mind is also that you need to trademark your domain name and your logo in Canada.

To learn more on the Canadian Trademarks please visit http://trademarkcanada.org

specifically for brand names you can read here: http://www.trademarkcanada.org/word-phrase-Trademark.htm

They have the facility of free consultation and you can speak with their specialists online on 1-877-226-2921 or 416-226-2921.

I am not a lawyer so not take this as a legal advice.

Please do let me know if you have additional questions.

Regards
Michael.

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