This question was answered by Tom Donovan of the McLane Law Firm
Q: I own a full service landscaping business called Lemon Landscaping. For the past 20 years, I have built up this operation under that name in New Hampshire and Massachusetts. Family has always helped out. My wife keeps the books, and I’ve hired my children and my brothers’ children to work over the summers. Lemon Landscaping advertises in newspapers and the Yellow Pages, and we have a fleet of four pickup trucks that proudly display our yellow and green logo.
Yesterday, a client said he saw our “new trucks” and asked why we changed the logo. We didn’t. As it turns out, my nephew and former summer employee Ted, has gone and set up his own landscaping business locally. He is calling it Lemon Landscaping. Ted also registered that trade name with the New Hampshire secretary of state and filed a business name certificate in Massachusetts, which I never did. What can I do?
A: Assuming that the matter cannot be solved within the Lemon family (a pretty good assumption, given what has happened so far), there remain some options for you.
Unfortunately, you may have to live with the prospect that your nephew can use the family name for his own business. Unless “Lemon” has become a “famous” landscaping trademark, then you cannot prevent your nephew from using it in some form. Only a few family names, like McDonald’s or Dior, become famous trademarks in a particular field of use.
Still, you can likely prevent Ted from using “Lemon” in association with “Landscaping”, at least in this geographic area. Why? You were the first to use the name. Also, the two identical business names have caused confusion, and are likely to cause further confusion.
The fact that only Ted registered the trade name does not make a difference, since trademark rights, in the end, depend upon priority in time, continuous use, and use with specific products or services.
A court would likely require Ted to stop using Lemon Landscaping for his business, but would permit him to use another name that is different enough, like Ted Lemon Lawn Care. Even better, you and Ted, perhaps with legal help, might be able to negotiate an agreement for him to modify his business name. In doing so, you can craft a contract that addresses matters with greater clarity and specificity than what a court might order.
Could you have prevented this? Maybe. Had you filed for trade name registration in New Hampshire and Massachusetts 20 years ago, that might have dissuaded your nephew. Even though registration is never the final word on whether a name gets protection, it can have a powerful psychological effect on others, even others within the same family.
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