Business Name Infringement Texas

Summary

A Texas-based sole proprietor, operating under a DBA, discovered another business using a similar name and marketing materials. The proprietor had not registered his business name as a trademark. The other business, operating as an LLC, was in the same industry. The proprietor had evidence of first use of the business name, including DBA registration paperwork, invoices, a website, and a Google profile. The proprietor had not taken any steps to protect his business name or prevent further infringement. The proprietor was willing to take any necessary steps and had a budget for legal action. The proprietor had evidence of consumer confusion between the two businesses.

Full Conversation

I have a DBA in Texas. The business operates as a Sole Proprietorship. My business has been in operation for 3 years now. Just last week I came across another business who has used part of my business name as their own. They have it filed as an LLC. What can I do to get them to no profit off of my likeness.
Did you register your business name as a trademark? If not, it might be difficult to prevent them from using it. However, you can consult with a trademark attorney for more specific advice.
no i did not
What is the exact name of your business and the other business? This will help determine if there's a likelihood of confusion.
My business is Light It Up - Holiday Lighting Service theirs is Light It Up
What state is the other business operating in? This information will help determine which state's laws apply to your situation.
Texas
What is the nature of the other business's operations? Are they similar to yours? In Texas, trademark rights can be established through use in commerce, even without registration.
yes we are in the same industry
What specific actions have you taken so far regarding this issue?
I reached out to them but they told me to do my own research
What was the content of your communication when you reached out to them?
I asked them to change their name and marketing material that is similar to my intellectual property
What was their response when you asked them to change their name and marketing material?
The told me they had rights to use the name because I didn't have an LLC
What evidence do you have to prove that your business was operating under that name before they established their LLC?
My DBA paperwork
What is the date of your DBA paperwork and the date of their LLC registration?
My DBA was registered on October 22n *. Their LLC was registered in *
What is the exact date of their LLC registration? In Texas, if you used the name first and can prove it, you may have common law rights to the name.
April *, *
What is the nature of your business and how similar is it to the other business? In Texas, common law rights to a business name are based on who used it first and can prove it.
I install Christmas Lights and they do the same thing
What evidence do you have to show that your business was operating under that name before they established their LLC?
DBA registration paperwork and 3 years of invoices with customers, and a website and google profile.
What actions have the other business taken that you believe are infringing on your business name?
Their name is almost identical to mine, their slogans and marketing uses almost the same name as my business and my marketing material
What specific slogans and marketing materials are they using that are similar to yours?

In Texas, common law rights to a business name are based on:
- First use and proof of it
- Likelihood of confusion due to similarity in name and nature of business.
Light It Up Holiday Lighting, Let's light up your Holidays
What actions have you taken so far to protect your business name and prevent further infringement?
none
What is the exact date of your DBA registration?
October *, *
What is the exact date when you noticed the other business using your business name?
September *, *
What is the exact date when they started using your business name in their marketing materials?
April * *
What actions have the other business taken that you believe are infringing on your business name?
Their business name is almost the exact same as mine, minus Holiday Lighting Service
What evidence do you have that they started using your business name in their marketing materials on April *, *?
Facebook Page, Google page and public record showing the date they created the business
What actions have you taken since discovering this infringement, such as contacting a lawyer or sending a cease and desist letter?
none
What is the exact name of the other business's LLC as registered?
Light It Up, LLC
What is the exact location of the other business? This will help determine the jurisdiction for any potential legal action.
San Antonio
What is the exact address of the other business in San Antonio?
i am not sure
What is the nature of the marketing materials they are using that are similar to yours?
Facebook page, Google Page and website content
What specific content on their Facebook page, Google Page, and website do you believe infringes on your business name and marketing materials?
Their business name
What specific actions have you taken so far to protect your business name and prevent further infringement?
none
What specific steps have you taken to protect your business name and prevent further infringement?
none
What specific steps are you willing to take to protect your business name and prevent further infringement?
any
What is your budget for legal action? This will help determine the best course of action. In Texas, you may have common law rights to the name based on first use and proof.
*
What is the nature of the marketing materials they are using that are similar to yours?
Ads and website context
What specific content in their ads and website context do you believe infringes on your business name and marketing materials?
their business name is confusing for the consumer since my business was established first
What specific instances or evidence do you have that consumers were confused between your business and the other business?
search results
What specific search results indicate that consumers are confusing your business with the other one?
I had a customer ask me which business i was
What was the customer's exact question and how did it indicate confusion between your business and the other one?
The consumer said I provided a quote when my records indicate i never spoke with her before
What evidence do you have to prove that you never provided a quote to this consumer?
all my quotes are tracked via Square and there were no customer records for her name, number email or address
What is the name of the customer who claimed to have received a quote from you?
Julie Sanchez
What was the date and context of your conversation with Julie Sanchez?