Someone Is Using a Name Like Mine. Trademark Infringement Basics

The short answer, expanded

A similar name is not, by itself, infringement. The law asks two questions. Did you acquire rights in the name before the other business did? And is the other business's use likely to confuse the people who buy what you sell? If both answers are yes, you have a claim, whether or not you ever filed anything. If either is no, the dispute looks very different, and the first weeks should be spent finding out which.

Many owners are surprised to learn that forming an LLC with the Texas Secretary of State, or registering a domain, creates no trademark rights at all. Those steps reserve a name for entity or internet purposes. Trademark rights come from using the name in commerce to identify your goods or services.

Do you have a trademark?

A trademark is a word, name, symbol or design that identifies the source of goods or services and distinguishes them from others. Rights arise from use. The first business to use a distinctive name in connection with its goods or services in a market generally owns the mark in that market, and Texas preserves those common law rights expressly: section 16.107 of the Texas Business and Commerce Code says no state registration adversely affects common law rights acquired before it.

Not every name qualifies. Courts sort marks by strength:

• Generic terms, the name of the thing itself, are never protected. A plumbing company cannot own the word plumbing.
• Descriptive terms, which describe a quality or feature, are protected only after they acquire secondary meaning, that is, after customers have come to associate the term with one source. Dallas Quick Print is descriptive.
• Suggestive terms hint at the product without describing it and are protected from first use.
• Arbitrary or fanciful terms, real words with no connection to the product or invented words, are the strongest marks.

A business trading under a descriptive name has rights that are harder to prove and narrower in scope. The same words used by another company for different services may not be actionable at all.

What registration adds

A federal registration on the Principal Register does not create the right, but it changes the lawsuit. Under 15 U.S.C. § 1057(b) and § 1115(a), the certificate is prima facie evidence that the mark is valid, that you own it and that you have the exclusive right to use it for the listed goods or services. Under § 1057(c), the filing date of the application counts as nationwide constructive use, which gives priority against anyone who began using a similar mark after that date anywhere in the country. After five years of registration the mark can become incontestable under § 1115(b), which narrows the defenses available to a challenger.

A Texas state registration under chapter 16 of the Business and Commerce Code gives a claim under section 16.102 for use of a confusingly similar mark anywhere in the state, with remedies that include up to three times profits and damages and attorney's fees when the infringer acted with knowledge of the mark or in bad faith, under section 16.104. It is quicker and less expensive than a federal filing but reaches only Texas.

An owner with no registration still has a claim, under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and under Texas common law. The differences are explained in can I sue for trademark infringement without a registration.

The test: likelihood of confusion

Every infringement claim, registered or not, turns on whether the other business's use is likely to cause confusion, mistake or deception about the source, sponsorship or affiliation of the goods or services. That is the language of 15 U.S.C. § 1114 for registered marks, § 1125(a) for unregistered marks, and section 16.102 of the Texas Act. Actual confusion is not required, but it is the strongest evidence.

Federal courts in Texas sit in the Fifth Circuit, which weighs a set of factors it calls the digits of confusion. No single factor decides the case, and the list is not exhaustive. The factors are:

1. the type and strength of the mark;
2. the similarity of the two marks in sight, sound and meaning;
3. the similarity of the products or services;
4. the identity of the retail outlets and purchasers;
5. the identity of the advertising media used;
6. the defendant's intent in choosing the mark;
7. evidence of actual confusion; and
8. the degree of care potential purchasers exercise.

In practice, the factors that carry the most weight in a Dallas dispute are similarity of the names, overlap in services and customers, and evidence of actual confusion: misdirected phone calls, emails meant for the other company, reviews posted to the wrong business, customers who ask whether the two are related. An owner who starts a log of those incidents the day the problem is noticed has built the center of the case.

Who was first matters more than who registered first

Priority is decided by first use, not first filing, with one large exception. A business that has used its name in Dallas since 2015 has common law rights in the area where it operates and is known. If a company in another state registered the same name federally in 2020, the registrant has nationwide priority from its filing date under § 1057(c), but not against the Dallas business in the area where it was already using the name. Section 1115(b)(5) preserves that prior use as a defense even against an incontestable registration, limited to the area of continuous prior use.

The reverse also holds. A Dallas business that adopted its name last year, after a competitor had already been using a similar name here, is the junior user even if it registers first. Searching the USPTO database, the Texas Secretary of State's trademark records and the market itself before adopting a name is how businesses avoid finding this out from a demand letter. The USPTO's search tools are at uspto.gov/trademarks.

Example

Suppose a Dallas residential remodeling company has operated as Lone Oak Renovations since 2017, with a logo of a single tree, and has no registration. In 2026 a new company in Plano opens as Lone Oak Remodeling with a similar tree logo and begins running the same kind of social media advertising. Within two months the Dallas company receives several calls from homeowners asking about estimates the Plano company gave, and one negative review meant for the Plano company appears on the Dallas company's listing.

The Dallas company is the senior user in the Dallas area. The names and logos are close, the services are the same, the customers and advertising channels overlap, and there is actual confusion. It has a claim under § 1125(a) and Texas common law for an injunction and damages, and a strong case for a quick resolution by letter. The name Lone Oak is arbitrary as applied to remodeling, which helps. Had the company instead been called Dallas Home Remodeling, the descriptive name would have made the case far harder.

What you can ask for

The primary remedy is an injunction ordering the other business to stop using the name, usually with a transition period and often extending to the domain name and social media handles. Since the Trademark Modernization Act of 2020, 15 U.S.C. § 1116(a) gives a plaintiff who shows a likelihood of success a rebuttable presumption of irreparable harm, which makes a preliminary injunction more attainable than it was before.

Money is also available. Under § 1117(a), a prevailing plaintiff may recover the defendant's profits, its own damages and the costs of the action, subject to the principles of equity; the court may increase damages up to three times and may award attorney's fees in exceptional cases. The Texas Act's section 16.104 allows treble recovery and fees where the infringer acted with knowledge or in bad faith. How these are calculated is set out in remedies in a trademark case under the Lanham Act.

Where the case is filed

A Lanham Act claim can be filed in federal court regardless of the amount in controversy or the citizenship of the parties, under 15 U.S.C. § 1121. Most trademark cases in Dallas are filed in the Northern District of Texas, with Texas statutory and common law claims added. The same claims can be brought in Texas state court, and some owners prefer it when the dispute is purely local. The choice is discussed in where IP disputes get decided.

First steps that cost nothing

• Gather dated proof of your first use: early invoices, the first website capture, signage photographs, advertising receipts.
• Start a confusion log: every misdirected call, email or review, with dates and what the customer said.
• Capture the other business's use: screenshots of its website, social media, listings and advertising, with dates.
• Check the records: the USPTO database, the Texas Secretary of State's trademark registrations, and the other company's formation date.
• Do not call the other owner to accuse them. A conversation before the facts are known can concede priority or invite a counter-letter.

Most disputes of this kind are resolved by a well-supported letter followed by a negotiated change of name or a coexistence agreement. When a letter is the right opening move, and what it should contain, is covered in when a business should send a cease and desist letter.

Mistakes that weaken the claim

• Waiting. Years of known coexistence support defenses of laches and acquiescence, and they undercut the claim that confusion is harming you.
• Overclaiming a descriptive name. Demanding that a competitor stop using common words invites a response that you have no rights at all.
• Sending a letter without checking priority. If the other side used the name first, the letter becomes their evidence.
• Letting the registration lapse or never filing. A registration filed now still fixes a constructive use date and adds presumptions for the future.

When to involve a litigator

Before the letter goes out. The priority analysis, the strength of the mark and the choice between a demand, a coexistence proposal and a filing are decisions that shape everything afterward, and the facts gathered in the first weeks are the ones the case will rest on. Tina Wysk represents Dallas businesses asserting and defending trademark and unfair competition claims in state and federal court; the practice is described at intellectual property disputes.