Trademark Issue - Company Wants Me to "Cease and Desist" the Use of My Company Name
My question involves business law in the state of: Pennsylvania/California
I received a letter today regarding the name of my business which happens to be a day spa. Let's say for example, my business name is called (to protect my anonymity): Flower Skin Care. The company that wants me to cease and desist the use of my business name, as well as my website (which generates a lot of business), has a trademark under the name of "Flower Skin." they are a skin care manufacturing company, and the products are simply called "Flower." However, the company is called: Flower Petal Laboratories Inc., and their website is called: fpli.com My website is called: flowerskincare.com
I am a day spa, they are a skin care manufacturer. I sell skin care products at my spa (from different companies, not under the name of my business). I also sell my products online (again, not my own products, from different skin care companies; re-selling).
Can you anyone offer any advise here? Will I need to change my business name? My guess is that they want me to give up use of my web presence, because they want all web searches to go directly to them, and I'm in the way.
They filed an intent to use the name "Flower Skin" 5 years ago, but didn't actually register is until Nov. 2008.
My business has been open for 2 years.
Thank you in advance
Re: Trademark Issue - Company Wants Me to "Cease and Desist" the Use of My Company Na
I have seen many cases of trademark abuse that I would urge to be fought. Their trademark is weak using all common words, but they have a trademark and they are going to enforce it. If they were in different classes of goods or services, you might have a chance, but not when they are the same. Confusion is obvious. No federal court is going to have any sympathy for you.
If you fight it, it will cost you tens of thousands, at least.
As an example, I had a website called phonebell.com. It was the generic use of the word "Bell". Ameritech had abandoned the Bell name many years before. None of their "Bell" trademarks (Wisconsin Bell, Illinois Bell, etc.) had ever been used in interstate commerce. It was not a trademark infringement.
Lucky for me the domain was in the name of a corporation. I was not a party but I appeared for the corporation until the court hold me I couldn't do so. Ameritech hired an intellectual property law firm in Chicago. This case never got to discovery. There was not a single hearing. It was just paperwork back and forth. Ameritech's attorney fees were $65,000.
In this case Ameritech's attorneys did not do their homework. The corporation had been administratively dissolved more than 2 years before, so the award of attorney fees was meaningless. They got the domain of course.
In your case, if they sued, you would end up paying your attorney and theirs together with damages.
I would recommend (I am not an attorney and I recommend you speak to one immediately) working out a deal with them. Get a different domain name, move the site and redirect the old one to the new one for 30 days or something, and then give them the old domain.
It is the website that got their attention, not your local spa. But they will probably want you to change that name too now that they know about it. Perhaps you can work out a reasonable compromise so you don't have to totally rebrand your business.
The smart thing might be to reinvent your business and come up with an original name that you can Trademark and build you own market branding.
Re: Trademark Issue - Company Wants Me to "Cease and Desist" the Use of My Company Na
This is standard operating procedure for companies. They are obligated to pursue any possible trademark violations in order to retain their trademark.
Consider speaking with a trademark attorney in your area to draft a letter explaining the differences in your businesses.
Without knowing the specifics of the names, we couldn't really speculate on how strong their claim is. In any case, in matters of business, it's always a good idea to speak with an attorney to protect your interests.