Forums: Discussions for entrepreneurs and small business.

I am about to open a retail store.  I plan on growing into several store locations over time and possibly expanding into several states through organic growth or through offering franchises.  I am in Virginia and have found one other business that has the same name & business as the name I wish to use.  It is in Iowa and is a small three store chain.   I will use a ficticious name here for this example:  Dixie Trading.  Based on a trademark search it does not appear that a trademark for "Dixie Trading" has been registered federally.  If I choose to employ the name "Dixie Trading" should I register it as a trademark?  Is it a moot registration, because the name, in "trademark terms" is already owned by the fact that it`s already being used?  If I stay in Virginia  can the Iowa people file a suit solely on the fact that I have used the name?  I understand this is a legal discussion and wording is critical...I apologize for any confusing wording.  Thanks for any replies!

Hi there! I live close to you in The Fredericksburg area. If they don`t have a trademark it should be ok. File your fivtivous name then if you incorporate, llc, etc, the state corporation commission will run a search to make sure no one else has in in the state. If you start using it in commerce, i don`t think there will be a problem. What service are they compared to yours? Are they a service business? Good Luck on your stores, can`t wait to hear about them.:)

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Founder Girls with Goals

The domain name dixietrading.com is already in use.  However the domain expires in April of this year so you maybe able to grab it when it expires.  There are services that will submit your registration when the domain name becomes available.  I think there is a good chance to get the name as the site was last updated in 2000.

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Daniel the Denim Doctor

I`m sorry, I am only using "dixie trading" as an example.  It`s a different name.  The folks in Iowa are in the same retail business, which includes services and goods.  They have taken the xxxxx.com domain name but it appears they are and will continue to be a localized operation in Iowa.   Based on my trademark search it doesn`t appear that they have registered a federal mark.  From what I  read here I gather that they were first with "use" of the name therefore they own it.  Would it make any difference if I filed for a mark after their "use" of many years?  By all appearances there would be no harm done to their business, especially if we stayed away from Iowa with our locations.  It`s amazing that a small localized business could tie up a business name in the entire country, especially if I decide to keep the business outside of their business sphere. Does it make any difference if I clearly fashion a unique logo, much different from theirs?   Again, thanks for any replies.

PS Hi stonesledge...I am in C`ville...went through your area in the middle of the storm Sunday...it was NASTY! 

meisterhund... for me, your original post was very clear that Dixie Trading is an example to illustrate your question.

Of course we all have advice, maybe with real life experience, but you should really speak to a lawyer if you are serious. Many times you can get questions like this answered by email from your local lawyer for little or no fee.

My experience shows I was threatened with a 3.2 million dollar lawsuit with my ElusiveTreasures.com account. Evidently there is multi-million dollar business in another state with the same name, who felt the dot com name should be theirs. I contacted my lawyer and all that, but really nothing happened. A few letters from my lawyer, a few aggressive phone calls from their lawyer, and it was basically over. That was 4 years ago. I have never heard from them again. thank goodness. From what I gather, this "other business" designs and creates high end jewelry for celebs, kings and queens.


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Vincent Wilcox (a.k.a. KRAKR)
Drummer
My band: Letters Make Words

When you say you performed a trademark search, did you conduct a search only for "dixie trading," or did you use a commercial service which picks up names that are similar in sight, sound, and meaning?  If not, I strongly recommend doing so.

A decision whether to pursue trademark registration depends on various factors, including the relative strength of the trademark, and whether you believe there may be a strong brand image associated with your name.  You are correct in that trademark rights automatically begin once you use the mark in commerce, however federal registration gives you some additional rights and allows your mark to be found in the U.S. Patent and Trademark Office`s database.

I conduct trademark searches and registrations regularly, so if you`d like some more specific legal advice, please contact me.


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