Trademark question:
Company A is developing services and products and comes up with a
relevant trademark that it wishes to use for its yet unlaunched
service. Internal company discussions occur regarding this
trademark/brand and initial look and feel designs are made by a
graphic designer to represent the trademark. A Internet domain name(s)
is reserved (3 months ago) with the name and the company starts to
investigate officially registering the trademark, as opposed to simply
starting to use the trademark. In the process of registering, a search
is done on USPTO.gov and it is determined that this trademark was
recently registered with a date one month ago from today by Company B,
registered with the exact same use intent/purpose..but the trademark
is not currently used in any obvious fashion by company B. What
potential claim would company A have to this trademark vs. Company B?
Looking for legally grounded answers. |
Request for Question Clarification by
pafalafa-ga
on
07 Feb 2006 17:15 PST
b3jz-ga,
I've fielded a fair number of questions on trademarks, and it never
fails to amaze me how very unclear-cut the entire trademark universe
is.
Being first counts for something in trademark law. Registering with
the Trademark Office (and there are state and international, as well
as federal trademark offices) counts for something, too.
But probably the biggest weight goes to use. Whoever uses a trademark
in a public, visible and proper fashion has a strong claim to
continuing that use, and to having exclusive right to the trademark
for it.
However, even if you come to the conclusion that the law is on your
side (and Google Answers does not give legal advice...see the
disclaimer, below), you have to ask yourself whether you're willing to
risk a legal battle over a name, if the other party feels that the law
is on *their* side.
Please have a look at this site:
http://www.ggmark.com/howare.html
as it has some very good information on what constitutes proper use of
a trademark.
If you get into a dispute over a mark, then all the factors listed at
the above site -- as well as the factors you mentioned in your
question -- will come into play.
In other words, it's not simply a matter of who registered first, or
who took out a domain name first, or who used (or didn't) the name
publicly. There are many more factors that are to be considered as
well.
After looking over the GGMark site, let me know what sort of
additional information you would like to have, to make for a complete
answer to your question, and I'll see what I can do.
Thanks...and best of luck,
pafalafa-ga
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Request for Question Clarification by
pafalafa-ga
on
07 Feb 2006 20:06 PST
I'm sorry...the link I meant to post was this one:
http://www.ggmark.com/guide.html
although you'll probably find both pages have useful material to offer.
paf
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Clarification of Question by
b3jz-ga
on
07 Feb 2006 20:18 PST
Thank you. I am knowledgeable regarding Trademark basics. I also
understand that there is some gray area with regards to interpreting
the law. I'm not looking for a legal decision or even direct legal
advice, what I am looking for are similar cases where this situation
arose that I can read. Cases that also explore whether "use" was met
and what are some heuristics for determining some sort of "use"
threshold would be useful too. I've been to various websites,
including USPTO.org etc...what I desire is very specific references
for this narrow topic within trademarks, as opposed to general
trademark information.
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Request for Question Clarification by
pafalafa-ga
on
08 Feb 2006 09:15 PST
Thanks for getting back to me.
It's always pretty challenging finding "similar" cases, because very
few cases actually resemble one another very closely. Instead, they
are quite dissimilar, but may nonetheless address issues that have
bearing on the case you described.
For instance, have a look at this case:
http://www.uspto.gov/web/offices/com/sol/foia/ttab/2dissues/2000/109424.pdf
CSX IP, Inc. and CSX Hotels, Inc. v. Grenbriar Corporation
which discusses the status of domain name registrations, and let me
know if it is of value to you, or not.
Meantime, I'll continue looking for other materials, so that I can
hopefully provide an answer to your challenging question.
paf
|
Request for Question Clarification by
pafalafa-ga
on
08 Feb 2006 17:08 PST
And here's another, fairly recent, case that goes directly to first use:
www.uspto.gov/web/offices/com/ sol/foia/ttab/2dissues/2005/92043533.pdf
Again, your feedback would be helpful in focusing my continuing research.
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Request for Question Clarification by
pafalafa-ga
on
08 Feb 2006 18:08 PST
The link didn't copy properly. Try this one instead:
http://www.uspto.gov/web/offices/com/sol/foia/ttab/2dissues/2005/92043533.pdf
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