##I have had my business name for 15 years another company trademarked it in 2011 am I toast?
I secured my company web address in 2000 which clearly identifies my company in my industry. My web address format is as follows:
with the asterisks being my company name. Another company trademarked the name (the asterisks) in 2011. We are in a similar industry. Should they have had the responsibility to search this before naming themselves or am I just out of luck? They have very deep pockets I do not.
You are not toast, not yet anyway. However, you should speak to an attorney as soon as possible.
I need to make a few assumptions to provide some information. First, I am assuming that you are in the USA and so is the other company. Next, I assume that the other company applied for (and received) the trademark as the US Trademark Office.
Foremost, in the US, there is no legal requirement that a trademark search be performed prior to applying for a trademark. The US Trademark Office does a search before granting a US trademark. This search is limited to the US Trademark Office's records. If you are not registered, the US Trademark Office will not consider any other trademark rights that you have, because they do not know about them. Many trademark applicants choose to search, because, it is efficient to do so. It is not unusual to limit this search to just the US Trademark Office database.
On the other hand, it is required that the applicant sign an affidavit that says that the rights they are requesting do not infringe on the rights of another. So, if you have evidence that the other company knew about you prior to filling their trademark application, this is evidence that you should provide to your attorney. Think about checking your records, for example, did anyone from their corporate network ever visit your website? Have your sales people met each other at conferences? Did you ever exchange business cards with them?
Depending on how you used your business name, there is a good chance that you have common law trademark rights. These rights occur automatically, for example, if you intended that your customers find you using the business name. The specific nature of the rights might vary somewhat from one state to the next. To prove that you have these rights, you must have evidence of your sales and how you used your business name. However, assuming that you have common law trademark rights going back 15 years, your rights could have seniority over the rights in the US Trademark granted in 2011. You may be able to petition the US trademark office for cancellation of their registration, and subsequently have your business name registered.
Of course, you want to carefully investigate. Perhaps they have been using this name for 20 years, and, you have not known about them.
I recommend working with an attorney for trademark cancellation proceedings. However, if your pockets are not deep, like any legal proceeding, you may be able to represent yourself. On the US Trademark Office website, you can learn more about trademark cancellation proceedings by searching for TTAB (Trademark Trial and Appeal Board).
Finally, you may also want to consider action in your state's court as an alternative to a trademark cancellation proceeding.