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Re: is there a case?
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Posted by M. Arthur Auslander on March 20, 2000 at 04:59:30:
In Reply to: is there a case? posted by bondgirl on March 18, 2000 at 21:06:02:
: Hi! I have a question (all facts and names are hypothetical). Assume company A and company B are both bicycle manufacturers, both called, for example "Bike-a-rama". They both have the exact same name and make the same type of goods (bikes). Assume Company B is based in say Florida and although they have been a business since the 1960's, they never registered their name as a trademark at the USPTO.
: Company A (doing business under the same name since the 1980s)however decided to apply for a trademark over a year ago and is about to have the certificate of registration issue for the name "bike-a-rama" .
: In the meantime about 2 months ago, Company B created a website and started advertising their products, at bikerama.com. (they were holding the domain name for a year, which company A had initially held but lost due to some adminstrative oversight) Please note that company A has been advertising on the web for a few years, first under Bike-a-rama.com and then when they lost the name due to the clerical error, they registered the domain name bike-a-ramaINC.com. SO my question is: Once the federal trademark issues, will company A have a trademark infringement case against company B? I am assuming a likelihood of confusion analysis ie, company B's engagement of business on the web under the same name conflicts with (what will soon be a) federally registered mark as well as possible prior "common law rights" on the web. Is there a case here? SHould company A seek counsel to send a cease and desist notice once there trademark certificate issues? Also company A trademark assumes the day of filing as the mark's "first use in commerce" so do they get the benefit of this earlier date or does the certificate issue date apply? Thanx!
Early Legal Advice Is Not Expensive. Company A and B are a lawyers dream. They have screwed up very nicely to make lawyers rich. They have both screwed themselves too but B has the legitimate edge if used properly. Whether it is ignorance or unwillingness to spend businesses really can't afford to work without legal help they can trust. Just as with a Doctor you have to be reassured that the Doctor both knows and is interested in the patient rather than just the fee.
M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law Since 1909
505 Eighth Avenue, New York, NY 10018
212-594-6900, fax 212-244-0028, aus@auslander.com
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