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[lerkan]

hi,

I'm new to this forum, and was hoping to get a question answered.

I'm a iphone developer and have been using the word "todo" in some of my application since oct 2009. Today, I got a mail from a guy who says he had register the name "todo" as a trademark, and asked me to remove my applications. Here is the trademark: (USPTO Reg. No. 3,964,288)

What confuses me is that the filing date is in mars 2010.

Can someone really register a trademark of a word, and force other to stop using it, when that word have already been used for a long time?

What should I do?

Thanks a lot in advance
Have a nice day!

Sincerely,
Josh

[MYK]

First, if that really is the word in question, you probably shouldn't be posting such details on an internet message board.  Your competitor might do a Google(R) search, see this thread, and gain some advantage by it.

Have you been using the word as a trademark?  For what sort(s) of thing(s)?  In what geographic areas?  Is it perhaps merely descriptive of your application's purpose (creating lists of things to work on)?

You may have senior rights to the trademark.  You may be in a sufficiently different category of goods that you're not infringing.  It may be generic/descriptive, and he may have rights only when combined with other words (the word "the" appears in a lot of trademarks;  by itself, it is not a mark).

This sort of inquiry is extremely dependent on your individual situation.  You would need to talk with a trademark attorney to assess what your rights are.

[lerkan]

First, if that really is the word in question, you probably shouldn't be posting such details on an internet message board.  Your competitor might do a Google(R) search, see this thread, and gain some advantage by it.

Have you been using the word as a trademark?  For what sort(s) of thing(s)?  In what geographic areas?  Is it perhaps merely descriptive of your application's purpose (creating lists of things to work on)?

You may have senior rights to the trademark.  You may be in a sufficiently different category of goods that you're not infringing.  It may be generic/descriptive, and he may have rights only when combined with other words (the word "the" appears in a lot of trademarks;  by itself, it is not a mark).

This sort of inquiry is extremely dependent on your individual situation.  You would need to talk with a trademark attorney to assess what your rights are.

Hi,
Thanks for reply. To clarify, say there are 50 "bowling score" applications on the iphone appstore. No one have register the trademark for the name "bowling score". Could I register "bowling score" as a trademark, and then force all the other developers to change the name on their applications, because it infringe on my trademark, so I'm the only one that have the name?

Thanks

[Superchicken]

Although this person filed for the trademark in 2010, they are claiming a date of first use in commerce of July, 11, 2008 and a date of first use anywhere in June 10, 2008.  As such, at least on paper they claim to have been using the mark before your claimed 2009 date.  If you suspect their dates of first use are not legitimate you will have to do some investigation.  Somes times trademark applicants file for their marks years after they've actually been using it.  The delay in registering can be for any number of reasons, such as, the applicant discovers someone else is using their mark and they run to register, they didn't know initially that they needed to regsiter, or they couldn't afford to register when they first started using the mark.