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[hamsol]

Hello, here is a question that i see come up .. and yet, I copied this from the USPTO.gov website (copied for the sole purpose of needing help and to clarify).

What is a trademark?
A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

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What is a service mark?

A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.

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Ok, some please explain what this means: ......."used, or intended to be used, in commerce, ......."

This looks like to me, that if I trademark a name, and intend to use it for a future date .... I can do this right?

Right now I am in a big fight, because I could not use the name I trademarked in commerce, because I would violate a state law. For example, if i trademarked "World Wonders Real Estate", but could not use the name in full commerce .. because it would violate Dept Real Estate law, because I am not a broker, but just a agent. But I have used the term (first name) "World wonders" (last name) real estate agent .. and I have every intention of opening my own company, just as soon as can become a broker .. and have my own company (dba) .. .every intention is there, no abandonment ..... right?

Now if someone else all of the sudden likes the name I have trademarked, and sets up a full brokerage with the name before I can do myself ... and now this person wants to start a cancelation proceeding on my trademark.

Everyone I hope reads this, I hope understands that you can do everything right, and someone with more money than you can always try and steal it from you ... and I cannot keep up with the fees involved .. period.

Am i (fill in the blank) .. or am I ok, because "intend' .. means intend.

Hamsol

[hamsol]

Also ... I have heard and understand a little about Common Law rights for the first in use. However, I dont want to limit myself to just a certain geographical area .. even though While still using the modfied name/mark .. I have done interstate commerce .. would this open up to more common law rights ... and who has the burden of proof .. me or the "other" person.

Hamsol

[patentpilot]

An intent-to-use is just that, you're not using it in commerce, but you intend, down the road, to use it in commerce.  For example, if an automobile company wants to gear up to make and sell their new Flammerjammer car, they don't want to spend $$$ getting ready only to find Flammerjammer can't be registered (for whatever reason).  So, they file an intent-to-use and wait until they actually use it in commerce.
The issue you raise about real estate brokers is a state law issue having to do with holding out as a broker.  If I'm not yet licensed to practice medicine, I can't hold out as a doctor, but I could get my business ready to go with an intent-to-use application.

[JSonnabend]

Another benefit of filing an ITU is that the effective date of first use, once the applicant begins using the mark in commerce, will be retroactive to the filing date, not the actual date of first use.  The downside to the ITU route is the added expense of filing the Statement of Use.

- Jeff

[hamsol]

K, this maybe a stupid question .... but when I did register the mark, I was contacted and spoke with the trademark attorney .. and I explained just that to her. I told her my situation like stated above .. and she said that as long as I had promise/intent to use the mark .. i would be ok.

Now I know there is a case out there .. where a bank had a mark, and then modified their mark in commerce ... for ex: Big Red Bank of Wonder .. and they started using just Big Red Bank .. and the court found there was no abandoment of the original mark ... so If i modified my mark temp, like I did, would/could I uses this case as a defense?

thx,

Hamsol

[JSonnabend]

What does your new question have to do with ITU applications?  If you have a TM attorney, why aren't you asking her for advice, rather than asking a bunch of strangers on this forum?

If you're unhappy with your TM attorney, I suggest you seek a new one.  The non-specific advice you get here, while generally good as far as it goes, is no substitute for specific advice from your attorney.

That said, your most recent question makes little if any sense.

- Jeff