Employee filed for trademark ownership

I started a publishing company in 2009 and created a new title publication in 2010, hired employees in Oct. 2010. I did not register the title with the US Trademark office as I was testing the market to see if it would even support the title. Five months after hiring a certain employee I discovered she registered the magazine title's name for a trademark under her ownership, and she listed herself as the owner of the trademark even though she was being paid as an employee. I've filed a civil suit. The trademark has been approved for publication but has not yet been published. Any advice on how to handle this matter or what steps I can take to get her to back off? This is costing me time and money.What is the name of your state (only U.S. law)?What is the name of your state (only U.S. law)?

Are you in the U.S., mpublisher?

Trademark laws vary in significant ways from country to country and, in the U.S., federal or state registration of a trademark is not necessary (although registration can provide a trademark owner with additional protection). Trademark rights and ownership are established through the trademark's use in commerce, with ownership of a mark generally belonging to the first to use it in a commercial context.

This is different than in most other countries, where it is the registration that proves ownership, regardless of how long another unregistered mark may have been used in commerce.

With all of that said, if you are in the U.S., filing an infringement lawsuit is the way to go. This action (and it sounds as if you have already filed one?) can be filed in a state or in a federal court. It will be up to you to prove to the court that you were the first to use the mark in commerce and the mark used by your employee causes or is likely to cause consumer confusion and dilutes or could dilute the value of your mark.

Damages can be awarded to a plaintiff who can show actual harm caused by the willful infringement by the defendant on the plaintiff's trademark.

I suggest you review all of the facts of your particular situation with an IP attorney in your area. The attorney can better guide you in your current suit and help you to protect the rights you may have in the trademarked name.

Good luck.

mpublisher,

To piggy back on quincy's comment. Typically trademark infringement occurs when the accused infringer has used the same mark or a confusingly similar mark in association with similar goods or services. Registration of a similar mark may not rise to the level of infringement.

If the mark is still within the publication period, you can file an opposition to registration of the mark with the US trademark office before it is registered. You have 30 days to do so from the publication date.

As quincy mentioned, you may want to discuss all your options with a qualified trademark attorney.

Best of luck.

Nothing said in this post is intended to be and should not be taken as legal advice and no attorney/client relationship is created.

ip_attorney, your addition was an important one. Thanks.

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The forum's resident IP attorney, divgradcurl, does not post as frequently as before, so your contributions will be welcomed ones.