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[Ari Berman]

I have applied for a trademark for a tagline that I want to use in my business. The tagline did not turn up in a search of the USPTO database; nor did I find it while googling around once or twice.

Well, today, I googled some more (after having submitted my USPTO application for the trademark), and I discovered that the same tagline is being used by an Indian company that produces the same class of goods (although I don't believe they produce the same products my company produces).

I have learned, moreover, that this company does business in the US: they have what the company refers to as a "marketing office" on the East Coast.

My question is: Have I just wasted the $275 I sent in with my TEAS Plus Application?

I understand that a foreign company has as much right to claim "first use" as does a US company (all the more so, I imagine, if that company has an office in the US).

Assuming the answer to my question may be "yes," and after having come across a discussion of "composite marks" on this forum, it occurred to me that I might apply for a composite mark instead; that is, that I might apply for a trademark on the use of the tagline ONLY in combination with my already-trademarked company name.

Would this be a possible work-around?

If so, can I amend my TEAS Plus Application to indicate that it is for a "composite mark" that I would now like to apply?

Thanks very much.

Ari

[Isaac]

Without knowing the tag line involved, a definitive answer about
the combined mark is not possible, but I'm skeptical that if the
tagline is otherwise confusing similar, that combining it with your
mark would solve your problem.

It's not a given that there is an infringement problem.  Unregistered trademarks
may have geographic limitations, the tag line in question may not
be distinctive enough to be a protectable trademark are possible
reasons why an infringement problem may not exist.

[Ari Berman]

Thank you very much for your reply, Isaac.

Doesn't a website trumpeting their global ambitions, as well as their actual office here in the States, permit them to deny any geographical limitations that might be associated with their unregistered trademark?

Secondly, if I amended the application so that the goods were more narrowly defined to correspond to the goods I produce, and just let the application run its course, would that make sense?

As I've paid my money to the USPTO, it seems I should try to achieve something with it.

[Isaac]

I don't know whether a web site is enough to establish commerce
in a global area constituting the entire United States, but there
may be more activity involved than just the web site.

Limiting the scope of goods may or may not be enough.  The question
of whether two marks are confusingly similar involves a lot more
than the scope of goods although that is an important factor.

You may be successful in registering a mark if the only competing mark
is a common law mark, only to find that your use of the registered
mark infringes a senior, non registered mark.

[Ari Berman]

Thanks, again, Isaac.

Could it be argued that a tagline is not quite in the same league as a product name or company name?

I mean, the product is Product Name X, manufactured by Company Name Y. Tagline Z seems to me to be much less likely to be a source of confusion, provided that the product is clearly identified by its unique name, and as having been manufactured by a company having a unique name.

Finally, I notice that after 5 years, an unchallenged, federally-registered trademark becomes harder to challenge. My business may stay under the radar during that time and so escape the notice of those who might wish to challenge my use of the tagline. In the meantime, if I received a Cease and Desist letter, couldn't I just stop using the tagline?

I mean, forgive my naivete if that's what it is, but it just seems to me that the senior user of an unregistered mark should be able to stop me, but that the right to PUNISH me should be as weak as his interest in protecting his mark (as demonstrated by his failure to apply for trademark protection in the US, where he is, apparently, doing business).

[Isaac]

It's not impossible to answer questions concerning the strength
of a slogan as a trademark without knowing the particulars.

Arguing that a mark deserves less protection because it has not been
registered seems like a losing argument to me.  Rights arise
from usage and not from registration.  A common law trademark is
a perfectly viable mark.