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[yeskiweb]

Hi! I'm new at this forum and I was wondering if you could help me out with a few doubts I have. I'll try to be brief.

I work for a Spanish company and we have recently started doing business in the US. I have done some research regarding trademark law and I know that a federal trademark registration, although more expensive and with a longer process, has better guaranties than a states registration.

I also know that if a state trademark registration is previous to the federal registration it still has rights in that specific territory.

What I don't know is how that kind of opposition would work. Would it go to a state or federal court? Would it ruin the possibility of registration throughout the rest of the US? or would the federal registration continue and stand normally with the exception of that particular state?

I'm sorry if this is a bit confusing.
I would really appreciate some help.

[TheTrademarkCompany]

It depends upon what exactly you are asking in reference to what type of opposition would work and what would be the geographic scope of that opposition.

In regard to federal trademark oppositions, the registration of a federal trademark can generally be accomplished through two manners.  First, by filing an Opposition Proceeding with the U.S. Patent and Trademark Office's internal court known as the Trademark Trial and Appeal Board.  Second, by challenging the ability of the other mark to register through a larger federal court action filed with a U.S. District Court that retains jurisdiction over the owner of the applied-for trademark.

Should you be successful through the first avenue (Trademark Trial and Appeal Board) that may preclude the opposed applicant from again attempting to register the same trademark with the U.S. Patent and Trademark Office under a doctrine known as res judicata.  Note, however, a win before the Trademark Trial and Appeal Board only involves the registration of the trademark.  It cannot stop the actual use of the trademark in commerce.

For that the second option would have to be considered - filing an action before a U.S. District Court that retains jurisdiction over the owner of the applied-for trademark.  Under this course of action you would have the broadest available remedies including, but not limited to, stopping the other's trademark from registering before the U.S. Patent and Trademark Office, stopping the other's use of the mark, and monetary damages.  Note, should you win the doctrine of res judicata could also apply here thus preventing, or limiting, the issues from being re-litigated in the future.

Regarding state proceedings, typically state proceedings, either before a Secretary of State or Corporation Commission, can only affect those rights in that one particular state.  Likewise, state court proceedings can only affect rights and the ability to use a state trademark in a particular state.  So it is very limited in the scope of relief it can provide.

Your last comment indicates you are possibly interested at looking into the possibility of splitting up geographic areas between the two parties.  If the other party retains a federal registration of application on file with the U.S. Patent and Trademark Office this could be accomplished by and through a concurrent use proceeding which seeks to divide federal trademark rights in specific geographic areas  to diverse trademark holders.  Of note, this is possible but the rules for geographic division among owners and the procedure therefore are very specific and I would suggest you contact someone with experience in the area to see if you specific set of facts qualifies you to entertain the action.

Hope this helps.

[JSonnabend]

 I didn't read Matthew's full post above.  It's probably correct, as he knows his stuff.

My response, however, is more straightforward.  Unless you are strictly a single-state business (and who really is these days), forget state registrations.  They are generally of little value.  In the U.S., trademark rights are best protected by federal registration, period.

Oppositions go to Trademark Office, but similar actions in federal courts are possible as well.

- Jeff

[yeskiweb]

Thank you very much. I can tell that you have a lot of knowledge regarding this subject and you have helped a lot.

Just one thing though, you say:

Your last comment indicates you are possibly interested at looking into the possibility of splitting up geographic areas between the two parties.  If the other party retains a federal registration of application on file with the U.S. Patent and Trademark Office this could be accomplished by and through a concurrent use proceeding which seeks to divide federal trademark rights in specific geographic areas  to diverse trademark holders.  Of note, this is possible but the rules for geographic division among owners and the procedure therefore are very specific and I would suggest you contact someone with experience in the area to see if you specific set of facts qualifies you to entertain the action.

Hope this helps.

Actually that's not what I have in mind. The thing is, I know that there are three types of trademark protection sort of speak. federal, state and common law.
When you register your trademark via the USTPO, the trademark attorney only searches for similar or equal trademarks which have been registered federally. This means that there is a possibility that although your trademark is "approved" by the USTPO, there might be another trademark owners who may have a previous state registration -or no registration at all- and therefore have previous rights for a similar or equal trademark.


We would like to register our trademark federally via the USTPO, but we are afraid that once it is registered it might collide with another similar common law or state trademark. We don't know if that would jeopardize or registered trademark in the whole of the US or just in the geographical territory where the other party has been using their previous trademark in commerce.

I hope I've managed to make my self a bit clearer.

And, once again, thank you very much.

PS. Could you please recommend any literature that would help me become more familiarized with the trademark proceedings in the US. I've been studying the Lahman Trademark Act but if you know of any book or material which could be useful I'd really appreciate it.


Thank you too Jeff!

[JSonnabend]

You are correct about federal TM registrations possibly "colliding" with state and/or common law rights.

To help prevent this, I advise all clients to do a clearance search before adopting and/or launching a brand.  There's a description of the searches I do on my website (www.SonnabendLaw.com/tmsearches), and I believe Matthew has a description on his site of the searches his company does as well.  Virtually all TM attorneys provide these kind of services.

- Jeff

[yeskiweb]

Thank you very much. I'll take a look at your website right now!