How can I stop someone from stealing my business name? 5 Answers as of August 22, 2011I've recently received an e-mail from an anonymous individual from (mycompanyname)@gmail.com. In the e-mail, they threaten to copyright and trademark my business name (my business is a registered s-corporation in the state of FL for 2-3 years now), and upon receiving said copyright/trademark, forcing me to remove my website unless I pay them a hefty "premium." The person threatening mentioned in the e-mail that they are an old client who was upset with the service they received, so in return they want to ruin my business. They also signed the e-mail with my name (and may quite possibly be posing as me in e-mails to others). Is it true that they can suddenly trademark the name that I came up with and force me to stop doing business as it? Also, is signing e-mails with my name and threatening me illegal (extortion possibly)? If so, what do I have to do to stop this individual. Is there somewhere I can report them or will I be forced to sue them?
Intellectual Property Center, LLC | Ak Shaf
There are a number of legal theories which may apply to prevent the person from impersonating you and from attempting extract a premium for use of your business or trademark name in a domain name, including the laws against cybersquatting. Cybersquatting generally refers to when someone attempts to use a brand name or trade name of another in a domain, without any legal basis, to extract a premium from them to purchase their domain. I would recommend contacting an attorney to address your specific legal questions and give you legal advise.
Answer Applies to: Kansas
Devon & Associates | Marcia A. Devon
The fact the person is anonymous is a big clue that they are not legitimate. The fact that they do not know the difference between copyright (what is the subject matter which is allegedly copyrighted?) and trademark points to their illegimacy. The fact that it was sent by email rather than a letter also detracts from its credibility as a "real" cease and desist letter. Signing emails with your name is fraud, possibly criminal fraud and identity theft, and the threats to you are extortion. You may wish to visit the district attorney's office and/or the police station. It is not possible to sue someone if you do not know their name. The police may be able to assist you in tracking the sender from the email address. It is particularly worrisome that they may be sending bogus emails under your name. When a legitimate trademark owner corresponds with you and requests that you cease and desist use of their trademark, they identify themselves and send formal correspondence, often from their attorney. However, you may be leaving yourself vulnerable if you have not registered your trademark. The registration as an S-corporation is helpful, but a trademark registration is a completely separate matter. The first question I would ask you if you were to consult with me is: are you using the business name as a trademark to identify one of your products or product lines? Someone else could file what is called an "intent to use" trademark application in the U.S. Patent & Trademark Office (USPTO) for your trademark, alleging an intent to use the trademark in the near future with a specified product line.[ A statement of use and proof that the applicant is using the trademark is required 6 months after the date of allowance of the intent to use trademark application.] The USPTO would not search the corporate records from all 50 states and would not discover your filing. The USPTO usually searches only existing trademark registrations and pending applications when the USPTO examines the application to determine whether the application should be denied based on prior use by a third party. The USPTO usually does not locate businesses which are using a particular name or trademark, but have not registered it with the USPTO.
Answer Applies to: California
Barton Barton & Plotkin | Maurice Ross
The behavior of this person is outrageous and possibly criminal. You must immediately retain legal counsel. You can stop this person but only if you retain counsel to bring suit and request emergency injunctive relief. I am available to help you. You cannot afford to wait and must treat this as an urgent matter.
Answer Applies to: New York