In the olden days (say, pre-1996), a Complexions Spa for Beauty and Wellness in New York and a Complexions Day Spa in California could peacefully coexist. After all, what savvy New Yorker would accidentally book her weekly manicure at a spa in “the O.C.” due to the confusingly similar names? However, with the recent popularization of social media, businesses are bumping into each other online in the realm of “friends,” “fans” and “tweets.” And so, it is more important than ever to take these basic steps to create and protect a unique business name, service mark and trademark.

• Choose a name or mark that no one else is using.
• Register your mark nationally.
• Recognize others’ preexisting common law rights (rights based on use only).

New Litigation Pits Common-Law Users against Federal Registrants

A case recently filed in the Northern District of New York raises just these issues. See Complexions Inc. v. Complexions Day Spa and Wellness Center, Inc., 1:11-cv-00197-GLS-DHR (N.D.N.Y., complaint filed Feb. 18, 2011). The case involves a spa in New York which has been operating under the names “Complexions” and “Complexions Spa for Beauty and Wellness,” since 1987, but with no federally registered service mark. Enter “Complexions Day Spa” which began doing business in California in 2001 and applied to register several “Complexions”-based marks in 2007 with the U.S. Trademark Office. The New York Complexions did not seek federal registration until 2010.

Both spas have Facebook pages. Last January, Complexions Day Spa (CA) requested that Facebook take down the site for Complexions (NY). Facebook complied. Complexions (NY) responded by filing a suit for a declaratory judgment of its trademark rights and for an injunction requiring Facebook to restore the disputed page.

Protecting Your Rights in the Age of Social Media

In hindsight, this conflict (and the accompanying legal expense) could have been avoided. Complexions Day Spa (CA) could have chosen a unique name. As it turns out, dozens of spas use the term “Complexions” in their names. Having chosen a common name, the California spa now faces the prospect of challenging numerous senior users who may someday want to advertise with Facebook pages as well. A trademark attorney can help a new business owner determine not only whether another company has registered a similar name or mark but also whether other companies may have prior common law rights to a similar, but unregistered, name or mark.

Likewise, Complexions (NY) could have prevented this fight altogether by registering its trademark with the U.S. Trademark Office in 1987 when it opened its doors. Though a business’ common law rights are circumscribed to its geographical marketplace and natural area of expansion, a federal registration provides prospective rights throughout the U.S. Amid the expense and busyness of starting a new venture, it can be tempting to skip the step of registering your name as a trademark or service mark. After all, registration is not required for your business to begin operations. Yet, relying on common law trademark rights, which are restricted to a geographical area of use, is no longer feasible now that every local business can readily create a national and international presence through social media. (We will save international registrations for another article.)

For companies that have already secured national registration and want to limit the rights of common law senior users, the outcome of the Complexions case will be instructive. Getting a national registration does not deprive those who were using the mark before you of their right to keep doing so in their current geographical marketplace and area of natural expansion. Whether that area includes Facebook remains to be seen. Sending takedown notices to social media websites may prove a fruitless and even liability-inducing endeavor. (For instance, sending false takedown notices alleging copyright infringement has already been outlawed by statute.) Morover, defending one’s unique social media presence may turn out to be a necessary step in maintaining the validity of one’s own trademark. Stay tuned.