Today I got a call from a customer who received a “cease and desist” letter from a company in California who accuses her of copyright infringement. Now her brand new website, domain name and expensive new sign need to be changed. Her skin care company in Canyon Lake, Texas just happens to have the same name as one in California. Her business name is legally registered in Texas and has been for years.

I’m not a lawyer and I can’t offer legal advice, but I question the validity of the claim. According to everything I have read, there must be a likelihood of confusion to claim trademark infringement. In fact, Bitlaw states, “a plaintiff in a trademark case has the burden of proving that the defendant’s use of a mark has created a likelihood-of-confusion about the origin of the defendant’s goods or services. To do this, the plaintiff should first show that it has developed a protectable trademark right in a trademark. The plaintiff then must show that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake and/or deception with the consuming public. The confusion created can be that the defendant’s products are the same as that of the plaintiff, or that the defendant is somehow associated, affiliated, connected, approved, authorized or sponsored by plaintiff.”

Could a small day spa in Canyon Lake, Texas with strictly local business really be confused with a spa in California?

We’re going to change the site, she’s going to change her sign and everything else that has identified her business for years. Does anyone else think this is ridiculous?

Oh, if you’re wondering if your business name is violating some trademark out there, check out the Trademark Electronic Search System (TESS). It’s not completely comprehensive, but it’s interesting to take a look!

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