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[Yak]

If there is no live federally registered mark for a given proposed trademark, but there is an exact match of the proposed mark in a state registry, what is the best way to advise a client.  While the proposed mark may register due to the examining attorney only using federal marks in the search, the state mark has been in use since at least 1987 and has been renewed several times. 

[Kaitlin]

You haven't said whether or not the marks are used on goods or services that run in similar channels of trade or whether there are other factors impacting likelihood of confusion.  If other indicia of likelihood of confusion are present, I would not recommend going forward with a conflicting mark. 

The question isn't whether or not the PTO will find the senior mark, but whether the proposed mark will hold up if challenged by the senior user in an opposition or cancellation or infringement case. 

[JSonnabend]

This is an ordinary "senior unregistered user" situation.  What exactly are you concerned about?  Where senior unregistered rights exist, a junior user/senior registrant has junior rights.

- Jeff

[Yak]

You haven't said whether or not the marks are used on goods or services that run in similar channels of trade or whether there are other factors impacting likelihood of confusion.  If other indicia of likelihood of confusion are present, I would not recommend going forward with a conflicting mark. 

Yes, the marks are substantially identical and the junior mark (is not currently in use - plans to file an "intent to use") and the senior unregistered mark are used for goods that definitely run in similar channels and would be under the same IC. 

The question isn't whether or not the PTO will find the senior mark, but whether the proposed mark will hold up if challenged by the senior user in an opposition or cancellation or infringement case. 

So if the senior unregistered mark would likely prevail in a cancellation or infringement case the junior (applicant) probably should not file?

This is an ordinary "senior unregistered user" situation.  What exactly are you concerned about?  Where senior unregistered rights exist, a junior user/senior registrant has junior rights.

Do you have a reference where I can read more about the junior rights of the junior user/senior registrant. 

[JSonnabend]

Reference?  That's a tough one.  It's just basic TM law.  Do a WL search on "common law rights" and "senior" and terms like that.

Adding to what Kaitlin said, the question is not just whether your client will be sued or can register.  There is also the important business decision -- which many lawyers neglect to discuss -- concerning whether Swiss-cheese registration and/or use is acceptable from a business standpoint.

- Jeff

[Yak]

Thank you.