Trademark cancellation by senior common law user

[Comcommittal]

What is the name of your state? NH

I've done a lot of research on trademark law, and I've read in many places that a junior user who obtains federal registration of a mark that has a senior common law user can then limit the senior user's use of the mark to the geographic area in which they've already used it, while the junior user obtains nationwide priority and the right to use the mark everywhere else.

However, I've read in fewer places of the senior user's ability to cause cancellation of the mark in that situation.

On what grounds / under what circumstances can the senior user in that scenario successfully petition for cancellation, and what common circumstances make it likely or unlikely for the petition to succeed?

Is the geographic area of the senior user frozen as of the filing date of the application, or the registration date?

I'm starting a new business in an extremely crowded field and I've been knocking myself out trying to come up with a name that won't have any trademark problems. This question is with respect to a name that is in use by a business in another state that by all appearances is a local business. (They emphasize this in their website content, keywords, description, all of the clients listed on their site are local, etc.) I'd be happy to sacrifice the entire state in which they already do business and take the rest of the country, if that's possible.

 

[divgradcurl]

What is the name of your state? NH

I've done a lot of research on trademark law, and I've read in many places that a junior user who obtains federal registration of a mark that has a senior common law user can then limit the senior user's use of the mark to the geographic area in which they've already used it, while the junior user obtains nationwide priority and the right to use the mark everywhere else.

However, I've read in fewer places of the senior user's ability to cause cancellation of the mark in that situation.

On what grounds / under what circumstances can the senior user in that scenario successfully petition for cancellation, and what common circumstances make it likely or unlikely for the petition to succeed?

Is the geographic area of the senior user frozen as of the filing date of the application, or the registration date?

I'm starting a new business in an extremely crowded field and I've been knocking myself out trying to come up with a name that won't have any trademark problems. This question is with respect to a name that is in use by a business in another state that by all appearances is a local business. (They emphasize this in their website content, keywords, description, all of the clients listed on their site are local, etc.) I'd be happy to sacrifice the entire state in which they already do business and take the rest of the country, if that's possible.

Unfortunately, the answers to the questions you are asking really can't be provided without knowing a lot more of the facts of your situation, and then doing some research and applying the facts to the research -- there simply aren't any statutes or cut-and-dried caselaw that will give you an easy answer to your fairly complex questions. For example, you ask "Is the geographic area of the senior user frozen as of the filing date of the application, or the registration date?" -- this can depend on a number of things, the most obvious being if the junior user beings using the mark in commerce prior to the registration -- what common-law rights can be asserted to "bridge the gap" between filing and registration? What happens if the applicant does not aggresively "prosecute" their trademark, and lets the registration take longer than it otherwise could have? What happens if the senior user files and opposition? All of these are questions that need to be considered -- I'm not trying to be evasive, just trying to illustrate that any of-the-cuff answer given without a review of all of the facts may be a disservice to you.

Your best bet is to sit down with a local trademark attorney, or a local business attorney with some experience in trademarks, and give them ALL of the facts of your situation, and let them help you plan a strategy. In the meantime, if you haven't already read it, you could read this section of the Trademark Trial and Appeal Board Manual of Procedure (TBMP): http://www.uspto.gov/web/offices/dcom/ttab/tbmp/ read section 1100 -- for some reason I can't get it to link directly there right now. That will give you some information on how the PTO deals with these junior/senior issues.