Can a Word Mark be enforced retroactively?

[quincy]

they have registered the mark or filed for registration?

I don't know.

If a trademark application was filed, and the mark was published in the Official Gazette, oohlalaw would have had 30 days from the publication date to oppose the registration. A trademark registration dispute would then be handled through a USPTO administrative hearing. If an objection was not filed in time, however, the mark would be registered.

This is assuming that nothing was wrong with the application that could delay the registration. And this is also assuming the mark was proposed for registration on the Principal Register, which would be the case if it were a unique mark. Marks proposed for the Supplemental Register are not published for opposition and anyone who opposes the registration can file to have the registration cancelled.

I believe a personal review of the trademark issue, by an attorney in oohlalaw's area, should be part of oohlalaw's immediate future plans.

 

[quincy]

Yes, we started selling our DVD before the other person started using a fairly similar name for her courses. As far as we know, she lifted the name from our website and started to use it for her courses. We did not want to trademark the title of the DVD; we assumed it's protected under copyright law. The DVD has been copyrighted.

It sounds like we should contact an attorney for further details.

Thanks.

The title of your DVD is not protected by copyright but its content would be, with or without registration.

Is the name "similar" or the same? That can make a difference - although not much of one if consumer confusion is already apparent.

I think contacting an attorney in your area is your best course of action. We just cannot do personal reviews here and that is what is appears you need, for proper advice and direction.

Good luck.

 

[oohlalaw]

Is the name "similar" or the same? That can make a difference - although not much of one if consumer confusion is already apparent.

I think contacting an attorney in your area is your best course of action.

The DVD title ends in "ing." We have two domain names that take people to a site about this DVD. One of the domain names is the same as the title of the DVD. The other domain name is nearly the same, except it ends in "er" instead of "ing," and this is the one that someone wants us to give up. It's as if we had a domain name and DVD called "toilet training" and a second domain name called "toilet trainer" (these are not part of the actual DVD title or domain name), and someone wants us to give up the latter.

We think we will contact a local attorney about this, so we can find out where we stand.

 

[quincy]

The DVD title ends in "ing." We have two domain names that take people to a site about this DVD. One of the domain names is the same as the title of the DVD. The other domain name is nearly the same, except it ends in "er" instead of "ing," and this is the one that someone wants us to give up. It's as if we had a domain name and DVD called "toilet training" and a second domain name called "toilet trainer" (these are not part of the actual DVD title or domain name), and someone wants us to give up the latter.

We think we will contact a local attorney about this, so we can find out where we stand.

I think consulting with an attorney in your area is smart. And I suggest you or your attorney check on the status of the other company's trademark registration.

Marks that have been registered, or marks that have applications for registration pending, can be accessed for free through the USPTO website (http://www.uspto.gov). There is a good chance, if the other company only filed an application for registration in September and did not have their mark registered in September, that the trademark examiners have not reviewed the application or published the mark in the Official Gazette yet. This would allow you the chance to oppose the registration, if (after your attorney's review) facts indicate you have rights to the mark that deserve protection.

Again, good luck.

 

[oohlalaw]

Thanks again!

 

[quincy]

You're welcome from all of us, oohlalaw.

And, if you have the time to post back some time later with what happens with your trademark dispute, it would be interesting to hear how it is resolved.

Good luck.

 

[oohlalaw]

You're welcome from all of us, oohlalaw.

And, if you have the time to post back some time later with what happens with your trademark dispute, it would be interesting to hear how it is resolved.

Good luck.

Will do, hopefully this coming week.

 

[oohlalaw]

Things went along the lines that were mentioned here. The attorney checked the USPTO filing and says that since the TM has not yet been registered, at this point it's a matter of who qualifies for a "first in time use." Since we used it before the applicant, we can oppose the registration. He thinks we should reply to her since she is moving forward legally and suggested we advise her that we have a common law right in the mark (at this point, at least). He also said we might want to consider a negotiated solution (but we didn't discuss any details).

I asked if this person could eventually force us to give up our second but similar domain name that ends in "ing" instead of "er." He said if the person gets the TM registered and wants to claim possible confusion, this might become an issue. That's all we discussed for now.

We don't want to own (pay for) a TM for the term, but we do want to keep our domain names. I'll ask him about this next time we speak.

 

[justalayman]

We don't want to own (pay for) a TM for the term, but we do want to keep our domain names. I'll ask him about this next time we speak.

unless you are successful in preventing their registration, that isn't likely to happen.


please continue to post updates.

 

[oohlalaw]

unless you are successful in preventing their registration, that isn't likely to happen.


please continue to post updates.

Can X prevent a registration by Y without X filing to register a TM for the mark in question? In other words, can a registration be prevented and the mark in question be left open for public use, or does one party or the other have to register the mark since there is a dispute?

 

[FlyingRon]

Can X prevent a registration by Y without X filing to register a TM for the mark in question? In other words, can a registration be prevented and the mark in question be left open for public use, or does one party or the other have to register the mark since there is a dispute?

You could have protested the registration while it is pending. You're unlikely to do so now. Again, you are unnecessarily getting wrapped around the registration axle, here. Trademark rights arise from USE IN COMMERCE.

 

[justalayman]

Can X prevent a registration by Y without X filing to register a TM for the mark in question? In other words, can a registration be prevented and the mark in question be left open for public use, or does one party or the other have to register the mark since there is a dispute?

hang on for quincy or flyingron on that one. I cannot answer it properly myself.

 

[justalayman]

You could have protested the registration while it is pending. You're unlikely to do so now. Again, you are unnecessarily getting wrapped around the registration axle, here. Trademark rights arise from USE IN COMMERCE.

Ron, it appears it is still pending and possibly not even published for opposition yet, or if published, the opposition period is still open:

The attorney checked the USPTO filing and says that since the TM has not yet been registered, at this point it's a matter of who qualifies for a "first in time use." Since we used it before the applicant, we can oppose the registration.

 

[FlyingRon]

Ron, it appears it is still pending and possibly not even published for opposition yet, or if published, the opposition period is still open:

See #10 on this page then: http://www.uspto.gov/trademarks/teas/petition_forms.jsp

 

[justalayman]

See #10 on this page then: http://www.uspto.gov/trademarks/teas/petition_forms.jsp

Ok, that just threw my understanding of the issue out the window. It clearly states prior use is not a basis to object so, where does that leave a person with common law rights to a mark where another entity registers that mark; A claim of being allowed to use it due to prior use?

but that brings something else you posted throwing me:

You could have protested the registration while it is pending. You're unlikely to do so now.

if you cannot object to a registration filing due to prior use, what were you suggesting in that statement?