Trademark ?

[cluelessinNY]

What is the name of your state (only U.S. law)? NYS

Hi all and thanks in advance for helping

I have not formally applied for a trademark. I didn't rush since I have read that you do not need to formally register a trademark. (prob my first mistake)

I started a service business a few years ago and at this point in time it has remained a service based business in the beauty industry. Until recently no one has used my business name. Recently there has been a company formed abroad that is using it. Can I protect my name internationally?

The bigger issue is that recently (only a couple of months) a very large cosmetics company has named one of their product with my business name. Even the font of the logo is identical.

My problem is that I am in the early process of developing a line of products. While I intend on naming the product line under a different name I did want to attach my business name to it as well- ie. PRODUCT X by xxxxx. Is this going to pose a problem?

Can I still apply for trademark since I can prove that I have had the name established for a few years already? I have had media exposure to further document this including tv and online press.

 

[quincy]

First, it is up to a trademark holder to enforce his/her rights to the trademark. This is easier to do when the mark has already been registered with either the state or the USPTO, because a certificate of registration provides proof in court that the registrant owns the mark. It sets the date of first use in commerce.

As a most general rule, a trademark is owned by the person who, or the entity that, first uses the mark in a commercial manner. You can, therefore, potentially prevent other, subsequent users from using the same or a similar mark to identify their related product or service.

Even if your mark is not registered, however, you can sue (or threaten to sue) someone who is using your mark (or a similar one) on a competing product or service, if the other's use of the mark is liable to confuse, or already has confused, consumers as to its origin.

Without having registered your mark, however, you may be limited to bringing suit against those only in your own geographic area. Trying to prevent a foreign company from using the mark, without prior registration of your mark and use of the mark in that country, is probably futile, unless there is some proof that the other user is intentionally trading off your trademarked name, as could be the case with a famous, widely recognized name (or logo).

And, if a company is already famous and widely recognized, then you, as the less famous and less widely recognized company, could be the one found infringing on a mark, if you tried to market your related product or service under the shared or similar name outside your geographic area.

What I recommend you do is consult with a trademark attorney in your area and go over with the attorney all of the facts of the situation you now find yourself in. And you may also wish to wait for our resident expert, divgradcurl, to post with additional information and advice (and to correct any misinformation I may have inadvertantly provided). He is an IP attorney well-versed in trademark law.

Good luck.