Forums: Discussions for entrepreneurs and small business.

In the United States, trademark rights arise upon use and not upon registration.  However, registration provides you with additional rights.   So it is good that you have started the registration process.  Also, earlier use usually prevails.  So it sounds like you have the right to demand that the later user cease and desist.  However, you should be prepared for litigation, should they not do so.  This is rather complex and touchy so you would be better off hiring an attorney for this.

Another avenue would be to research if they have also applied for a trademark and oppose their application for registration.  Again this gets complex (it`s very similar to litigation and you would be better off hiring an attorney.   

If we can assist with either of these, let me know.

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Norton R. Townsley
Patent Attorney/Professional Engineer
The above message is provided for general information purposes only and is not to be construed as legal advice.

thank you LordEmsworth for the input,

I do have one question that maybe you can answer.

If person "A"  starts using the  trade mark , or any other IP issue as far as that goes.  Then Person "B" not  aware of "A" does a search , which comes up negative, then files to use the trade mark and starts using it.

wouldn`t, at best, person "A" only have the right for any market ( county or state) that they have already established themselves as doing business in   and person "B" would acquire the right for the rest of the nation.

It is hard for me to believe that a person who starts doing business in a  little villiage of Middleport NY would acquire the rights for that trade mark throughout the USA or even globally as far as that goes by just starting a small stand  at a flymarket or local retailer.

Can you shed some light on the above example??  

Mike

 

Mike,

There are many variables to your question.  Every intellectual property right carries with it its own sets of rules and laws.  Using a trademark as an example, where is A iusing the trademark?  County level?  State?  Federal?  A`s ability to prevent others from using his mark depends (1) on the geographical scope of the trademark, and (2) the class of products and services associated with the mark.  So, if B is using the same or similar mark in either a jurisdiction outside of A`s trademark scope, or is offering products/services outside of the class of A`s goods or services, there may not be an infringement.

This is a very rough overview, and there are certain exceptions that apply.

Dan


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Pepper Law Group, LLC
21 E. High Street, Suite D
Somerville, NJ 08876
informationlaw.com
Now available on DVD!
The Legal Considerations of Starting an Online Business

see I knew  there  is  much  more  to it  than  I  could ever  imagine  ,,,  I didnt  know  anything  about the class.

When I worked  at  Dominos Pizza  years  ago I was told that we had to answer the phone dominos pizza  notjust  dominos because  there was another firmalready  establish,   Ithink they said  flour,    that almost  sounds  like a  different class pizza ....  flour   maybe  not    ,, then  again  I have  concluded  that  you cant  always  believe  everything  you hear  , maybe  I  was  given some bad information  from a non professional. 

Thanks   Dan for  reinforcing  my ignorance  on the issue LOL

 

MIke

No problem, Mike.  Happy to help.

Maybe next time I order a Domino`s Pizza, I`ll have some fun with the employee and ask if this is "Dominos."  When they say, "it`s Domino`s Pizza," I can repeat the process until they finally cave and I can claim infringement.


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Pepper Law Group, LLC
21 E. High Street, Suite D
Somerville, NJ 08876
informationlaw.com
Now available on DVD!
The Legal Considerations of Starting an Online Business

The trademark infringement suit was from the makers of Domino Sugar.

Interesting article in Wikipedia. I wonder what the VW beetle is worth today that Tom Monaghan gave his brother for his half interest in the original store? Bet James Monaghan is still kicking himself over that deal.


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Steve - Kirk Foods, LLC home of the Gluten Free Cookie Factory - To reach any significant goal, you must leave your comfort zone. - Hyrum W. Smith, Founder, Franklin Quest

What if a current trademark exists for a company and their name is similar to mine and the industry (category) is the same?

For example (I have used fictional names for sake of example): 

If their company name is New York Publishing Group and my name is York Publishing, Inc.  and their trademark has the following:

Word Mark:  NYPG New York Publishing Group

Mark Drawing Code:

(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS

Disclaimer:
NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE NEW YORK PUBLISHING GROUP APART FROM THE MARK AS SHOWN

Can I go forward with my company name and start putting out products?  Am I in the clear?  Can they sue me?

I don`t know if it makes a difference, but for the sake of example, they are located in New York.

Thanks!!
Richard