We have a clinic in South Carolina providing medical exams ,Drug
Screening , DNA , Health Screens ,...Services. We formed an LLC in the
year 2002 in the state of South Carolina under the name lets say XYX.
There are two distinct services that we provide , one is the medical
testing  and  the rest is DNA testing , Drug Screening and Health
screening, etc. One gets billed through a third party and one we
invoice the customers diretly. In order to separate diferent aspects
of our business for accounting purposes  we created a seperate entity
(d/b/a) at the time of LLC formation called lets say ABC Diagnostics.
Therefore - we are XYZ LLC d/b/a ABC Diagnostics) We started our biz
in July 2002. ABC Diagnostics required advertising in yellow pages
etc, so we have advertised that segment of our business as ABC
Diagnostics since July 2002. We have also been known in our city as
ABC Diagnostics with a great repuation.
Lately , a competitor of ours who has been in biz for 15+ years and
provides the same services has changed its name to one that is very
similar to ours ( lets say " ABC's Diagnostics)causing mass confusion
amongst the existing and new cients.
We undestood that in the state of SC there are no requirements for
registering with the state the d/b/a 's . So we never registered our
d/b/a name ABC Diagostics with the state .
Our competitor was fully aware of our existane , they have visited us
at our office on a number of occassions and have seen our business
name advertised and displayed as ABC Diagnostics . They however claim
that when they did a name search they could not find ABC Diagnostics ,
therfore they registered their new name as ABC's Diagnostics with the
patent office as well as the sate of SC.
With all that said, What are our legal options or recourses here ? We
have requested that they do not use their new name nor advertise under
same name in the sate of SC. The similarity in biz names is effecting
our business ( actually effecting both businesses) . I would like some
fedback and eductaion in this matter specifically references to case
laws, or court opinins B4 taking any actions. The Seize or decease
rights have been communicated to them gently and nicely. I would very
much appreciate any reference material I could use on the subject
issue to know what my rights are to prevent my competitor from using a
very similar name as mine. I have been using my business name say ABC
Diagnostics ( d/b/a) for 3+ years. My competitor changed its biz name
to ABC's Diagnostics 3 months ago !
Many Thanks in advance...
Sid58

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Request for Question Clarification by justaskscott-ga on 15 Jul 2005 00:01 PDT

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Clarification of Question by sid58-ga on 15 Jul 2005 00:50 PDT

Sorry , it was meant to be $20.00. I am willing to pay $20.00 for an
answer. If case laws for state of SC are provided I am willing to pay
$35.
Cheers
Sid58

If you want to raise the price, you can do so by accessing "my question"

In most states, it is a prerequisite to doing business under an
assumed or fictitious business name (a "dba") that you file a
certificate with the secretary of state.  If you did not, you likely
do not have authority to transact business as "XYZ LLC d/b/a ABC
Diagnostics."

That issue aside, in most states, a dba filing does not give you
exclusive or preclusive rights to a name.  For example, if I go in and
file a dba certificate today for the name "Superior Auto Body," my
competitor can file the identical dba the next day and under most
state laws regarding assumed or fictitious business name filings (aka
dba filings), I cannot do anything about it ~under dba law.~  That is
not to say I may not have rights under trademark law.

Under trademark law, it sounds like you have better rights to the ABC
Diagnostics name (even if you failed to file a dba certificate--again,
that goes to the issue of authority to transact business, not naming
rights), ASSUMING that "ABC Diagnostics" is protectable as a
trademark.  I have clients all the time who are pissed off because
they have been running, e.g., "Memphis Auto Body" for five years and
some guy opens up another "Memphis Auto Body" across town.   The
problem is that "Memphis Auto Body" is a generic name for an auto body
business located in Memphis, and generic names are not protectable.

So, if "ABC Diagnostics" is generic for what you do (provide medical
screening and diagnostic services), under trademark law there is
little you can do to stop the other guy UNLESS your business name is
not generic AND the name has what's called "secondary meaning."

"Secondary meaning" is term of art in trademark law that means your
name has acquired, through repetitive use and constant advertising, an
identification with your business in consumers' minds in the relevant
geographic area.  In other words, if you conducted a survey and told
people the name "ABC Diagnostics" and they thought of your business
AND "ABC Diagnostics" is not generic, you might be able to prevail
under common law trademark theory based on your priority of use.  But
proving secondary meaning is hard and expensive.

Note that if they beat you to the punch and registered ?ABC?s
Diagnostics? as a dba, again, that does nothing for them in a
trademark battle.  Have they filed state and federal trademark
registration applications?  If they beat you to the punch there, too,
your only recourse is to oppose those registration applications based
on your priority of use and the similarity of the names.  But
remember, if ABC Diagnostics is generic, then so is ABC?s Diagnostics,
and the other guy will not be able to get a registered trademark,
either.

So, what to do?

I'd send the cease and desist letter immediately based on your
priority of use.  Leave it up to the other guy to raise the genericism
arguments (note that if he does argue genericism, it undermines his
ability to get a registration).  In trademark law, the phrase "first
in time is first in right" is still very much true.  Even if they seek
registration before you do, if you have priority of use you can still
prevail in many respects.

If your mark is not generic, you have a good case: priority of use,
evidence of actaul confusion, same lines of services, same geographic
area.  You need to send the letter now, though, to avoid what's called
a laches defense (meaning you slept on your rights to the defendant's
prejudice).