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Taking my name

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doughgirl1024

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A pizza shop in a community close to mine ,is opening under our name. I have a dba in our pizza shops name, but never trademarked. Apparently in pa you can have 5 dba’s under the same name. It’s a crock that the state can take money for a dba, and you need to be trademarked at an added expense.
We have been in business for 15 years,starting as a pick- up,delivery, and in the past 5 years expanded to bar/ restaurant. We are successful, and that is from the long hours,and extreme financial spending to make my place what it is. I am so mad that someone can take my name, and skate on my coat tails. I mean…who does that! I have recently hired an attorney, and filed for trademark yesterday, after that, we will send a letter to the poser, to cease and assist. Has anyone ever heard of this, and if you have, any support would be helpful. Thanks.
 
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Let your attorney handle the work. But is your attorney actually scecialized in TM or Registration law? A run of the mill family attorney might just charge a lot of money but be out of their comfort area.

You might have an uphill battle unless you can prove direct competition. For example Romeo’s Pizza from OH (Sean Brauser) really can’t complain about Romeo’s Pizza of Chicago. They don’t compete. At Expo, Sean talked about getting a national TM for Romeo’s. Firehouse Subs lost a TM battle trying to prevent a place in SC using the word Firehouse in their name.

http://www.fastcasual.com/article/184307/Firehouse-Subs-loses-trademark-case-CEO-plans-appeal

What about your logo? Are they copying that too? Sometimes your brand logo is almost as powerful as your name. If you have something unique you need to TM/Register that as well.
 
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Yes…our attorney specializes in said subject. The shop is in the same county, and has proven to be a direct confusion to consumers already. I had called my veggie vendor for an order a few weeks back, and he had asked veggies to b delivered to new location, or old? I was like, what new location? Hence…the call to my attorney, apparently they want to use my veggie vendor as well. We did decide to trademark logo too…mine as well, since doing everything else. I dont think i would have a problem if they were in another county, or state. It seems to me they are opening under our name that close to possibly be mistaken as a second store.
 
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Im not an attorney…but I’ve got some experience with this.

First off, I really really doubt, that if you haven’t trademarked your name, either statewide or nationally, you can prevent someone from using your exact name. Unless your real name is the name of a restaurant (such as a person who’s last name if McDonald CAN name their restaurant McDonalds) trademarks, I believe, are the only way of preventing copycats.

As far as competition being a factor, I don’t believe whether or not the offending business is in close proximity has anything to do with it…and I only got this knowledge through experience.

My restaurant’s name is Joey Garlics. We were sued by Guy Fieri’s restaurant, Johnny Garlics. We are in CT and they are in Cali. Even though our names are DIFFERENT, it was our attorneys’ opinion that they would win in court. His attorny’s said that we can’t use the name simply because PATRONS were mistaking our place for his (actually it was another restaurant that stole our name, did a lousy job, and remarks on places such as Yelp alerted Fieri’s attorneys that INDEED, the similarity in names was causing them to lose customers.

So, long story short, We stettled out of court. We got to keep our name, but we cannot expand out of the state of connecticut WITH that name. And we were federally trademarked also…perhaps his high profile made a difference in this case…but it was an eye opener thats for sure.
 
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I would register the name “The Original XYZ Pizza” and make notes on your ads and menus and your store “Not affiliated with ABC Pizza of Whatever City!” Hanover pretzels does that with the other Hanover that is in the state of PA that is not them. They talk up the Original thing in their ads and I am guessing this has a lot of legal directions it can take if they cannot get their name secured. If you can’t beat it…use it to your advantage. Have you contacted this new shop and asked WTF??? :x
 
You do NOT need to register a Trademark. I’m an attorney, but not an IP attorney, so I don’t want to be construed as giving legal advice. So I’ll keep this short by directing you to uspto.gov:

"Must I register my trademark?

No. You can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several important benefits."

There is lots of precedent on this and your attorney can advise you appropriately. You have a good shot of stopping them.

pC
 
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Well…the attorney stated I would probably win, however if someone else wanted to use the name, I would have to take them to court too…and so on. Thousands of dollars everytime someone wanted to use my name. With a trademark it would prohibit that before there is an issue as I am in now. I wanted to call them, and say wtf? Butttttt…I have a feeling the conversation would go south pretty quick. So I opted for the safest route. I will keep u posted on the outcome. As of now we applied yesterday for trademark, and when we get approved, our attorney will send the cease and assist letter, they will have 10 days to respond. Maybe I can get em to pay my lawyer fees too! 🙂
 
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doughgirl1024:
Well…the attorney stated I would probably win, however if someone else wanted to use the name, I would have to take them to court too…and so on. Thousands of dollars everytime someone wanted to use my name. With a trademark it would prohibit that before there is an issue as I am in now. I wanted to call them, and say wtf? Butttttt…I have a feeling the conversation would go south pretty quick. So I opted for the safest route. I will keep u posted on the outcome. As of now we applied yesterday for trademark, and when we get approved, our attorney will send the cease and assist letter, they will have 10 days to respond. Maybe I can get em to pay my lawyer fees too! 🙂
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You might need another attorney as I have read cease and assist twice.

A cease and desist is an order or request to halt an activity (cease) and not to take it up again later (desist) or else face legal action. The recipient of the cease-and-desist may be an individual or an organization.

In the U.S. the term is used in two different contexts. A cease-and-desist order can be issued by a judge or government authority, and has a well-defined legal meaning. In contrast, a cease-and-desist letter can be sent by anyone, although typically they are drafted by a lawyer.

PD
 
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. . . and filing an application/registration for trademark does not require attorney action. “Cease and desist” notification does not require attorney action. Enforcement of the legal rights of trademark if the party fails to cease and/or desist, that usually takes an attorney to file action in appropriate courts.
 
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I met with a patent attorney just about a month ago regarding our shop name as well as another “idea” I wanted to patent. In addition, I did pretty extensive research to prepare for our meeting beforehand and this is what I took away from both the meeting and research. The overriding theme seemed to be: is there a likelihood for the average consumer to be confused between the two different businesses using the same name? Below is a litmus test of sorts that can be used to determine who has the rights to use the name:
  1. Does the business operate in the same geographical market as you? Yes, same town.
  2. Does the business operate in the same industry as you? Yes, pizza
  3. Who was using the business name first? You, for 15 years
    *If you have been using the name first and can prove that fact, your odds of successfully restricting them from using the name are very good.
  4. Who registered the name first? Hopefully you.
    *Even if the other pizza shop “beat you to the punch” in registering the trademark, the USPTO requires every patent applicant to conduct a “thorough” search of the market in which they will be using the trademark to determine if anyone else is using the name. And in signing the application, the applicant is stating that if they lie or falsify they can be subject to fines, imprisonment, etc. The USPTO will conduct it’s own search after one submits an application and they can reject an application. However I’m not sure if they simply search just the trademark library or whether they expand their search to the internet.
Again, I am no attorney and what I’ve said is based on what I took away from my meeting and research but it sounds to me that you are in a very favorable position considering that you definitely have been using the name before them and most likely have applied for the trademark before them. Below is a link to the trademark application which may shed some light for you on what goes into applying for a trademark and as you will see, it’s very detailed and lengthly. Good luck and keep us updated!

http://www.uspto.gov/trademarks/teas/TEAS_PLUS.pdf
 
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In PA you have to file a Decennial Report of Association Continued Existence to have exclusive use of a name. They give 717-787-1057 option 4 for questions. The fee is $70. My accountant said the law has been on the books for a while, but not been enforced. Hope this helps.
 
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