Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[Number 2]

My direct competitor, as I have found out, has not trademarked or servicemarked his company's name and logo. As sketchy as it may be, I am curious if there is any advantage of me setting up an online company by the same name in the same industry and then trademarking the business markings currently in use? Would I be able to force him to change his name, or is it because he can prove he has had the business name in operation for over 4 years, would trademarking his name be a waste of time?

I'm not looking for an "ethical" answer... just a legal one...

[Spielman]

The simple answer in a "legal only" sense is that in the U.S., the first to use a mark has the senior rights to the mark.

[JSonnabend]

would trademarking his name be a waste of time?

"Trademark" is not a verb.  That somewhat subtle grammatical issue actually undermines your plan.

- Jeff

[Kaitlin]

What Jeff is pointing out by the verb/noun distinction, is that rights in a mark are developed by USE, not by registering a mark--which is what you probably mean by "trademarking" it.  Use is the legal basis for establishing trademark rights, and first in time is first in right. 

While laws and morality certainly do not always act in concert, trying to accomplish the unethical "legally" will frequently trip you up, since as imperfect as it is, the law has its roots in a communal sense of what is right. 

[OMG IP]

My direct competitor, as I have found out, has not trademarked or servicemarked his company's name and logo. As sketchy as it may be, I am curious if there is any advantage of me setting up an online company by the same name in the same industry and then trademarking the business markings currently in use? Would I be able to force him to change his name, or is it because he can prove he has had the business name in operation for over 4 years, would trademarking his name be a waste of time?

I'm not looking for an "ethical" answer... just a legal one...

Seems like you've gotten some good answers.  Just because you have not been put on notice by a "TM" symbol does not mean first use rights haven't been established.

You could, theoretically, file a federal TM application for registration, assuming there no previous registrations or previously pending registrations prior to your application that your application would create a liklihood of confusion with.  This registration, speaking generally, could give you rights in geographical areas where  your competitor has not used the name.  If you're talking internet, you might find that difficulat.

[OMG IP]

Of course, another "legal" concern would be the declaration aspect you'll sign:

The undersigned, being
hereby warned that willful false statements and the like so made are punishable by fine or
imprisonment, or both, under 18 U.S.C. Section1001, and that such willful false statements may
jeopardize the validity of the application or any resulting registration, declares that he/she is properly
authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the
owner of the trademark/service mark sought to be registered, or, if the application is being filed under
15 U.S.C. Section1051(b), he/she believes applicant to be entitled to use such mark in commerce; to
the best of his/her knowledge and belief no other person, firm, corporation, or association has the right
to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as
to be likely, when used on or in connection with the goods/services of such other person, to cause
confusion, or to cause mistake, or to deceive;