Cease and Desist Letter for Using the Same Name as Another Company

[RoundBlock]

I own a Nevada LLC which operates community websites. One of our sites has been operating since April, 2011, first under me personally, then by the corp after I setup the LLC. We'll call the domain name "southwesthotrods.com".

An Arizona company by the name of "Southwest Hotrods, Inc" just sent me a C&D letter, stating I'll be facing legal action for using the name "Southwest Hotrods", and Arizona Trade Name. It appears they incorporated in February, 2011. I did not find a record of a trademark in the TESS lookup.

They sell hotrods, we operate a website for southwest hotrod owners and do not sell hot rods.

How does this play out? What can I do to avoid this in the future, with other websites of ours?

[Mr. Knowitall]

No comment provided here will be reliable as to the actual marks, as we don't know what they are.

Presumably you knew nothing of the other business or its name when you obtained the URL and started the forum? There's nothing inherently infringing over the name "Southwest Hotrods", and it's generic enough that there are many dealers in various states using the name. The use of such a name for a discussion forum (with no retail sales) should not infringe the use of the name by a retail operation.

[adjusterjack]

I'm guessing that you picked those names as an example of the similarity but that those aren't the actual names of either business.

Without the actual names there's no way to provide any helpful comments and revealing actual business names here is against the rules.

If, as Mr K suggests, that you aren't infringing, I suggest you have a trademark attorney review the situation and respond to the sender of the letter.

If your next comment is "I can't afford an attorney" well, the choice is pay one a little money now for the letter or pay one a lot of money later if you ignore the letter and get sued.

[RoundBlock]

Thanks for the replies, guys.

No comment provided here will be reliable as to the actual marks, as we don't know what they are.

Presumably you knew nothing of the other business or its name when you obtained the URL and started the forum? There's nothing inherently infringing over the name "Southwest Hotrods", and it's generic enough that there are many dealers in various states using the name. The use of such a name for a discussion forum (with no retail sales) should not infringe the use of the name by a retail operation.

That is correct, I didn't know about their use of the name. I searched for a trademark with the USPTO, but at the time I had no idea you could register a trademark with an individual state.

Would selling advertising and apparel merchandise be considered retail sales? We don't sell 'hotrods', or anything related to them.

I'm guessing that you picked those names as an example of the similarity but that those aren't the actual names of either business.

Without the actual names there's no way to provide any helpful comments and revealing actual business names here is against the rules.

If, as Mr K suggests, that you aren't infringing, I suggest you have a trademark attorney review the situation and respond to the sender of the letter.

If your next comment is "I can't afford an attorney" well, the choice is pay one a little money now for the letter or pay one a lot of money later if you ignore the letter and get sued.

Your guess is correct

And I understand not much opinion can be given without the actual facts.

I'm definitely going to be hiring an attorney. I spent most of yesterday contacting ones I thought would be a good fit. I absolutely do not want to go through this alone.