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bigdaddy
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Trademark rights?
« on: Jun 19th, 2007, 7:39am »
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Scenerio- Company 1. starts using a trademark in Ohio and does business in three surrounding states, then registers the mark.   Company 2. starts business a year later using the same mark in FL and GA but gets refused registration on the basis of company 1.'s mark.
 
My question, is company 1. given a certain amount of time to expand business into the states of FL and GA and do they obtain rights to the mark in those states because of registration or, does company 2. have the rights to use the mark in those states because they were the first to do business there.
 
It seems a company with registration should have an opportunity to expand their business but the trademark law seems strange sometimes.
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JSonnabend
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Re: Trademark rights?
« Reply #1 on: Jun 19th, 2007, 8:05am »
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Under that scenario, the company with the registration could essentially enjoin junior users' use once the registrant was ready to expand into a junior user's geographic market.  
 
Where a "junior" party was first to use but later to register (or didn't register), that party is actually the "senior" party in its geographic market, but it is "frozen" there; that is, it can't expand into the registrant's geographic market.
 
- Jeff
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SonnabendLaw
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bigdaddy
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Re: Trademark rights?
« Reply #2 on: Jun 19th, 2007, 10:16am »
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What exactly does enjoin mean?
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TataBoxInhibitor
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Re: Trademark rights?
« Reply #3 on: Jun 19th, 2007, 11:52am »
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on Jun 19th, 2007, 8:05am, JSonnabend wrote:
Under that scenario, the company with the registration could essentially enjoin junior users' use once the registrant was ready to expand into a junior user's geographic market.
 
Where a "junior" party was first to use but later to register (or didn't register), that party is actually the "senior" party in its geographic market, but it is "frozen" there; that is, it can't expand into the registrant's geographic market.
 
- Jeff

 
 
In that scenario, the registrant is then entitled to what they call "swiss cheese" protection, the US of A being the bread I suppose.
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JSonnabend
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Re: Trademark rights?
« Reply #4 on: Jun 19th, 2007, 2:21pm »
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on Jun 19th, 2007, 11:52am, TataBoxInhibitor wrote:
In that scenario, the registrant is then entitled to what they call "swiss cheese" protection, the US of A being the bread I suppose.

If by "swiss cheese" protection you mean with areas carved out, that's not right as I understand the fact pattern.  If Company 1 registers the mark before Company 2 starts using it, Company 1 can enjoin (i.e., stop) Company 2's use once Company 1 is ready to move into Company 2's geographic market.
 
- Jeff
« Last Edit: Jun 19th, 2007, 2:21pm by JSonnabend » IP Logged

SonnabendLaw
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718-832-8810
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