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[Sheldon I. Altfeld]

Can someone Trademark a name that has been in use for several years by a non-profit organization that did not apply for the Mark.  Would first use trump the Trademark?

[MSUSpartan]

In the U.S. trademark rights are based on use.  So if someone applied for the non-profit's unregistered mark, and the USPTO approved the mark (because they were unaware of the non-profit's unregistered use), the non-profit could have grounds to oppose the registration, or to cancel the registration.  The NP would have to prove the prior use of course, & it would have to do this in legal proceeding, so it would be very expensive - you know how lawyers are

So the NP would have been MUCH better off just registering the mark in the first place & avoiding the headache of litigation.  

[JSonnabend]

MSUSpartan is correct in broad strokes, but confuses some details.  

First, the Trademark Office will not consider common law trademark rights in its ex parte examination of applications.  Therefore, if the junior user is the first to get to the PTO, its mark will likely register regardless of the the senior user's unregistered use.

Second, I understand MSUSpartan (I have a Wolverine in the family, by the way) to suggest that the non-profit (i.e., the senior user) could remedy the situation by simply registering the mark itself.  This would not be possible if the non-profit is the second to file, unless of course the first filed application does not result in registration or any resulting registration is ultimately cancelled.

Finally, all attorney's are not prohibitively expensive.  My entire practice has been built to service individuals and small businesses at prices they can afford.  Others on this forum have similar practices, I believe.

- Jeff

[MSU Spartan]

Well, I'm often confused, but I don't think I'm confused about this.

First, it's not true that the USPTO "will not consider common law TM rights..." Section 2(d) of the Lanham Act provides that a mark will be refused registration if it:

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive...    emphasis added

Now, it is true that it is extremely unlikely that the USPTO will refuse a mark under Section 2(d) of the Act if the cite is not registered, and JS is right that the in a case like this, the first to file will likely be granted the Registration, but it's not true that the USPTO will not consider unregistered mark on the off-chance that the become aware of it - they have to, it's in the statute.  There's also the possibility of 2(a) False Association refusal, but that requires the USPTO to prove the higher "known for" and "affects the purchasing decision" standards

No, I was not suggesting that the NP could remedy the situation by registering the mark somehow over the previously registered mark.  That's why I said"..in the first place..." meaning before the other mark registered.  Sorry for any confusion (and sorry about that Wolverine problem    )

The "you know how lawyers are" crack was supposed to be a joke - that's why I added the winking smiley face as a kind of joke alert, since I can see lawyers read this thing.  It was just meant to be a tweak.  Sorry if you took offense.  

[JSonnabend]

I didn't take offense, just wanted to make sure the OP understood.

As for the 2(d) issue, in ex parte practice, you are incorrect.  See TMEP § 1207.03:

As a basis for refusal, §2(d) refers not only to registered marks but also to "a mark or trade name previously used in the United States by another and not abandoned."  Refusal on the basis of an unregistered mark or trade name has sometimes been referred to as refusal on the basis of a "known mark."  This provision is not applied in ex parte examination because of the practical difficulties with which an examining attorney is faced in attempting to locate "previously used" marks and attempting to determine whether anyone has rights in them and whether they are "not abandoned."

[mlfveer]

This is a very interesting question, and one that I have just recently thought of myself. My thought was that maybe, just maybe, trademark law might work the same way as patent law in terms of "prior art." Of course, trademarks and patents are totally different, but the idea is that if a term, a non-generic term, could be considered prior art then maybe the trademark office could extend protection to that term, and not allow its exclusive use.

MLF

[JSonnabend]

Trademark registration does not rely on "prior art" the way patent prosecution does.  Importantly, a mark may have been used in the past on the very same goods or services as a current user of the mark, and yet the current user may have a registerable interest in the mark.

- Jeff

[Kevin Roberts]

Hello,

I'm encountering this problem.  I've registered our band name in the late '90's.  Recently, I've been contacted by another band with the same name that formed in '81 and put out an album in '84.  This band did not previously TM and had not been active or had used this name for 20 years. They recently reissued their '84 album as a CD.  We had one CD release in the late '90's and another recently. This is causing confusion with performances, airplay and licensing. What are my legal chances of getting them to cease and desist?

Thank you.

[JSonnabend]

Your statement that "they did not TM" the mark is meaningless, as they were using the name as a trademark at some point according to the facts you've presented.  That said, in all likelihood, the issue simply may be whether or not the senior user (the other band) abandoned the mark for TM purposes.  

There may be other factors to consider as well, and you would be well advised in my opinion to retain an attorney to handle this matter.  I'd hate to see the tables turned on you so that you were forced to stop use of the name, not the other party.

- Jeff