What is the name of your state (only U.S. law)? WI
A guy starts a club several (say about 20) years ago. It started with just him, then him and a group of his local friends, then has been online for most of its existence. About 4.5 years ago he applied for a federal trademark of its name, and registration of the trademark was approved 3.5 years ago. He paid all expenses of registering the trademark and the registration was in his own name, but he stated on the club's web forum (after registration) that he was holding the trademark "in trust" for the club.
Then about three years ago (less than six months after the registration was finalized), he resigned from the club in a dispute with a number of its other members -- he felt that many of the club's newer members were causing the club to drift from its original mission and focus. Prior to his resignation he had always served as the club's president, but for several years the club had operated basically democratically under bylaws approved by him and the club's membership (and continued to operate under those bylaws after he left).
Now, about three years after resigning, he has "restarted" the club using the same club name and a different web site, and claiming (on the new web site) that his is the original and anyone else using that name is an imposter violating the club's trademark.
So, I wanted to ask:
1) Does the original founder of the club have a viable trademark infringement case against the group he resigned from, considering that the trademark was registered in his own name?
2) Does the answer to #1 change significantly once the founder's trademark becomes incontestable 5 years after registration? (I have read that incontestability doesn't affect a "valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration," but don't know how much use that state law protection will be since the club essentially operates worldwide via the Internet.) And does incontestability happen 5 years after the final registration date, or does the beginning of the 5 years relate back to the original application date (some sites I've seen say that but I don't see it in the law).
3) If the original founder files a trademark infringement suit against the version of the club that he resigned from, how strong of a "laches" defense would the club have based on the fact that he knew the club was continuing with business as usual every since he left 3 years ago and he has done nothing to stop it?
Any thoughts on any of these questions would be most welcome.What is the name of your state (only U.S. law)?
A guy starts a club several (say about 20) years ago. It started with just him, then him and a group of his local friends, then has been online for most of its existence. About 4.5 years ago he applied for a federal trademark of its name, and registration of the trademark was approved 3.5 years ago. He paid all expenses of registering the trademark and the registration was in his own name, but he stated on the club's web forum (after registration) that he was holding the trademark "in trust" for the club.
Then about three years ago (less than six months after the registration was finalized), he resigned from the club in a dispute with a number of its other members -- he felt that many of the club's newer members were causing the club to drift from its original mission and focus. Prior to his resignation he had always served as the club's president, but for several years the club had operated basically democratically under bylaws approved by him and the club's membership (and continued to operate under those bylaws after he left).
Now, about three years after resigning, he has "restarted" the club using the same club name and a different web site, and claiming (on the new web site) that his is the original and anyone else using that name is an imposter violating the club's trademark.
So, I wanted to ask:
1) Does the original founder of the club have a viable trademark infringement case against the group he resigned from, considering that the trademark was registered in his own name?
2) Does the answer to #1 change significantly once the founder's trademark becomes incontestable 5 years after registration? (I have read that incontestability doesn't affect a "valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration," but don't know how much use that state law protection will be since the club essentially operates worldwide via the Internet.) And does incontestability happen 5 years after the final registration date, or does the beginning of the 5 years relate back to the original application date (some sites I've seen say that but I don't see it in the law).
3) If the original founder files a trademark infringement suit against the version of the club that he resigned from, how strong of a "laches" defense would the club have based on the fact that he knew the club was continuing with business as usual every since he left 3 years ago and he has done nothing to stop it?
Any thoughts on any of these questions would be most welcome.What is the name of your state (only U.S. law)?