Cease & Desist Regarding Business Name

[eweaton]

What is the name of your state? Texas

This week our new K-12th private school in Houston, Texas received a "cease and desist" letter from a child care franchise chain in Georgia who demands that we change our name.

We searched our local area and Texas before we chose a school name several months ago. We do not believe there is a problem within our area or our state.

The question is - how much of a "business" name can they claim is "their" property? (Most non-profit schools do not even bother with registering a trade name anyway!)

Our school is called "Lxxxxx Classical Academy"
Their child care franchise is called "Lxxxxx Academy for Children"

They are insisting that we drop the word "Lxxxxx" completely from our name. Can they do this???

I found their registration info on the government search system. It says that they do not claim exclusive rights to "Academy for Children" apart from the mark.

Shouldn't we just be able to change our name to "Lxxxxx Classical SCHOOL" or "Lxxxxx Classical PREPARATORY SCHOOL" or "Lxxxxx Classical UNIVERSITY-MODEL SCHOOL" or some other name that does not include the words "Lxxxxx" and "Academy" together?

We did not select this name in order to deceive anyone. We are not even in the same state, and our programs are not the same in any way. They offer preschool child care. We a K-12th classical college prep school. Our logo is not even close to similar, and our names are not exactly the same any way.

We had no idea that a child care franchise several states away would have any interest in our school! I can only imagine that they plan to open chain locations in Texas at some point...

Any help or guidance someone can provide would be greatly appreciated!
Elise in Texas

PS - I am reposting with a different title in hopes that someone will reply with some sort of HELP!

 

[divgradcurl]

PS - I am reposting with a different title in hopes that someone will reply with some sort of HELP!

No reason to do that-- this board is staffed by volunteers who answer questions when they can. In the future, if you don't receive an immediate answer, be patient.

They are insisting that we drop the word "Lxxxxx" completely from our name. Can they do this???

Probably. If they have a registered trademark for "Lxxxxx" for schools, then they can probably keep any other school from using that word as part of their school's name.

Shouldn't we just be able to change our name to "Lxxxxx Classical SCHOOL" or "Lxxxxx Classical PREPARATORY SCHOOL" or "Lxxxxx Classical UNIVERSITY-MODEL SCHOOL" or some other name that does not include the words "Lxxxxx" and "Academy" together?

That depends on what exactly they have registered, and what exactly the word "Lxxxx" is. But if "Lxxxxx" is the key word in their trademark, then you probably can't use ANY combination of words containing "Lxxxx" to name a school.

We did not select this name in order to deceive anyone. We are not even in the same state, and our programs are not the same in any way. They offer preschool child care. We a K-12th classical college prep school. Our logo is not even close to similar, and our names are not exactly the same any way.

None of which really matters. Trademark infringement is a "likelihood of confusion" test -- most circuits use one or another multipart test to determine if confusion exists. Because you are using the key word in your name, and because you are both schools, it is certainly conceivable that a court could find that there exists a "likelihood of confusion."

As far as you not intending to deceive, that isn't important in an infringement action -- infringement is infringement regardless of intent -- but thepenalties are certainly more severe if the court finds that infringement was "willful," and that's the only time intent is relevant.

We had no idea that a child care franchise several states away would have any interest in our school! I can only imagine that they plan to open chain locations in Texas at some point..

That's a possibility. The other, more likely, possibility, is that they want to defend their mark in order tokeep their mark. The way trademark law is set up, if you know someone is infringing yet do nothing about it, you could lose the right to enforce the mark. That's why you hear stories about McDonalds coming after lemonadestands and the like -- McDonalds isn't worried that the lemonade stand willhurt business, but they are concerned about possibly losing the right to enforce their mark in the future.

Any help or guidance someone can provide would be greatly appreciated!

Talk to a local attorney with experience in trademarks. Based on what you've posted here, its fair to say that infringement may very well exist. However, infringement is very fact-specific -- an attorney who can review ALL of the facts and advise you accordingly may find that infringement doesn't exist. Either way, you really need to seek the advice of an attorney.

 

[eweaton]

Thank you so much for the reply!!!
I was wondering if we really needed to spend money on this or not. I guess we probably should see a lawyer...

A couple of clarifications first-
Their registration says the mark is for "child care services". Is that the same thing as a K-12th preparatory "school"? I does not seem like the same thing to me. But then, most real schools operate in one specific location and do not feel the need to register a mark.

The word in question comes up in the national TESS database as having over 1211 instances of trademark for LOTS of different things. I just can't see how they can trademark it in regard to ALL schools.

Also- I looked at Texas law on trade mark registrations. It appears to me that Texas requires that the company actually be using the mark and providing services in the state in order to register a mark in the state. Can a company in another state register a mark at the national level and require all states to honor it - even if they are not operating in the state?

One more thing - What about all the other schools (K-12th) that exist in Texas and elsewhere? Can they make all of them stop using the word "Lxxxx" in their name just because they filed for the mark first? Or can those schools turn around a go after them if they were actually using the name first???

Thank you sooooo much for your insight!
Elise

 

[I AM ALWAYS LIABLE]

My response:

Why not skip all the nonsence. Just call the school "The IAAL Preparatory School of Hard Knocks"?

IAAL

 

[I AM ALWAYS LIABLE]

TOP 10 Signs Your Kid Is Going To A School in Texas - -

NUMBER 10: Entire student body ties for last place in spelling bee.

NUMBER 9: Math homework always seems to be about prisoners trading cigarettes.

NUMBER 8: Every driver's ed class ends with lesson on dumping bodies in the Gulf.

NUMBER 7: The three "R's" stand for reading, writing and reloading.

NUMBER 6: Cafeteria suddenly has plenty of beef the day after that runaway bull was shot.

NUMBER 5: If you don't bribe teachers, your kid gets an obstructed view of the blackboard.

NUMBER 4: That cultural field trip to see the new Adam Sandler movie.

NUMBER 3: Art class was canceled when the principle "huffed" all the paint.

NUMBER 2: Map of the world on classroom wall shows two regions: "America" and "Where Rednecks Come From."

AND NOW, the NUMBER ONE Sign Your Kid Is Going To A School in Texas - -

Instead of a cap and gown, your kid gets a McDonald's hairnet.



IAAL

 

[divgradcurl]

Also- I looked at Texas law on trade mark registrations. It appears to me that Texas requires that the company actually be using the mark and providing services in the state in order to register a mark in the state. Can a company in another state register a mark at the national level and require all states to honor it - even if they are not operating in the state?

Federal registration preempts state registration. Some states allow for a state trademark registration, valid in that state only, which can help defend against claims of infringement from a common-law trademark. But a federally registered trademark is controlling in all states in the U.S. That's the point of a federal registration -- it immediately puts the entire country "on notice" and makes it so that if the trademark owner wants to go national with his or her product or service, he can.

One more thing - What about all the other schools (K-12th) that exist in Texas and elsewhere? Can they make all of them stop using the word "Lxxxx" in their name just because they filed for the mark first? Or can those schools turn around a go after them if they were actually using the name first???

The general rule is that anyone using a mark prior to a federal registration of that mark can continue to use the mark -- in other words, the holder of a registered mark may not enforce the mark against preexisting users. However, those preexisting users will probably not be able to "expand" their use of the mark, either into other geographical areas or even other product area.

 

[I AM ALWAYS LIABLE]

My response:

C'mon, divgradcurl - - this is funny stuff!

IAAL

 

[gwendat]

I am apalled, Day Care Name???

If I were you I do not see any judicial official seeing this name or theirs being a problem for customers(seeing as you are both regional,and in different regions;, and your customers will likely never cross paths;:unless you are running an exclusive boarding school! That is then out of my legeau! I would contact the owner of the other school and delicately point out that there is more room for one day care in ________________? Good luck, Mn, life is GOOD WHEN I'M ON MY HORSE!!!!!!!!!!!!

 

[divgradcurl]

My response:

C'mon, divgradcurl - - this is funny stuff!

IAAL

Sorry to be a party-pooper, IAAL!