Trademark advise needed please.

[sonic-x]

Hi, I need some advice about my company name, my company was formed 18 months ago but has only started trading this past month, I have applied to have the brand trademarked 1 month ago and I have been notified that a new application dating to december 2012 for my brand has been made in Germany that would cover the whole of eu and although I may proceed to register my mark the previous mark stands against mine, my company is based in the UK the other company has not traded in the uk before, do I have any rights as my company was incorporated 18 months ago prior to this application because I am being told I don't only against future applications. I own the domains for this brand under several countries in europe such as .es, .pl, .be etc, asia and the US, .com .co etc as well as the top level european .eu domain. I thought I acquired rights by use but apparently not, can they stop me trading under these domains when they get their trademark registered? all domains were registered between 2-1 year ago.

Appreciate any help on this.

Thanks

 

[quincy]

You do not gain trademark rights through domain name ownership alone. In the U.S., trademark rights are gained through the use of the trademark in commerce (with or without registration), whereas in many other countries, trademark ownership is determined by registration of the mark.

If you are in the U.K., you will need to locate legal assistance from either a U.K.-based legal advice forum or a lawyer in your area. This site handles U.S. law questions only.

Good luck.

 

[sonic-x]

So is the domain that I am using in the USA to trade covered bu use in the usa?

Thanks

 

[quincy]

The domain names do not confer any trademark rights at all on their own. Trademark rights are gained through the use of the trademark in commerce on a business product or service.

I suggest you consult with a professional in your area to address your specific concerns.

Good luck.

 

[sonic-x]

I understand registering a domain doesn't trademark it but I'm not talking about the domains on their own they are e-commerce websites trading so they are using my brand and are trading within the us, I understand regarding needing a lawyer for the eu but I need to know if my company that is now trading within the usa via my .com and has tm next to the logo has some rights within the USA or not because I ma claiming tm rights,I need to know as I dont want to register it in the USA until I have established what is going to happen here in the UK.

thanks again

 

[quincy]

I understand registering a domain doesn't trademark it but I'm not talking about the domains on their own they are e-commerce websites trading so they are using my brand and are trading within the us, I understand regarding needing a lawyer for the eu but I need to know if my company that is now trading within the usa via my .com and has tm next to the logo has some rights within the USA or not because I ma claiming tm rights,I need to know as I dont want to register it in the USA until I have established what is going to happen here in the UK.

thanks again

I suggest, if you want to know what is going to happen in the UK, that you consult with a UK lawyer for a personal review of all of the facts.

Good luck.

 

[sonic-x]

If you have difficulty understanding English leave the post for someone else to comment, I have made it clear my last question is regarding the USA

good luck

 

[sonic-x]

For any one else with the same question as me, I have briefly spoken to my lawyer (briefly so doesn't cover all the facts) but he has confirmed trademark rights are acquired in the us through use & registration and usually you have to have traded using the mark prior to registering it as a trademark in the USA although their are ways around that by using the mark within 3 years of regstering the mark etc, as for the UK the same rule applies to rights by use although It has to be proven and you are not required to be trading to apply for a trademark, however an existing non registered mark that has acquired rights through use can oppose a new application for an unregistered mark.

 

[quincy]

. . . I need to know as I dont want to register it in the USA until I have established what is going to happen here in the UK.

Registration is not required in the U.S. to establish trademark rights, and you can file an intent-to-use application prior to using the mark in commerce.

As for all of your other posts, you did not make it clear at all, sonic-x.

In fact, what you continued to say was that you needed to know what was going to happen in the UK with your trademark before registering your trademark in the US (see a quote from one of your posts above). To know what is going to happen in the UK, and since you and your business are UK-based, you need to speak with a UK lawyer and not with members of a US-based legal forum.

A personal review of your trademark and its history, and a personal review of the competing mark and its history, and a personal review of all facts, needs to be done. For this personal review - guess what? - you need a lawyer in your UK area - and probably you will need more than a brief conversation with one.

Is that English you can understand? Or do you need tea and crumpets with it?

 

[sonic-x]

Ahhh soz, I wasn't very clear on that part you quoted, Initially I wasn't aware tis forum was for the US law but some of my concern was regarding the US. What I meant was I want the brand protected in the USA as in the future I wanted to expand it in the US, tbh the companies operation in the US is more important than in the UK so eventually I do want to get it registered in the US but as I don't know if I will be forced to change my company in the UK as its based in the UK like you said Im putting off registering it in the USA for now.

however I wanted to know if I currently have some rights in the US already or can the German company registering the name in the EU do the same in the US. Im happy that I do have some rights in the US.

I agree with you in regards to the UK case, I need to get a lawyer specializing with the UK IPO, my current one doesn't specialize in trademark cases but gave me some advise as it looks like I am going to have to oppose the trademark application from Germany just to protect my company name.

Sorry again for the nasty comment regarding English I thought you were being sarcastic or disregarding my question about how it currently stood in the US alone.

Thanks

Sonic-x

 

[quincy]

Ahhh soz, I wasn't very clear on that part you quoted, Initially I wasn't aware tis forum was for the US law but some of my concern was regarding the US. What I meant was I want the brand protected in the USA as in the future I wanted to expand it in the US, tbh the companies operation in the US is more important than in the UK so eventually I do want to get it registered in the US but as I don't know if I will be forced to change my company in the UK as its based in the UK like you said Im putting off registering it in the USA for now.

however I wanted to know if I currently have some rights in the US already or can the German company registering the name in the EU do the same in the US. Im happy that I do have some rights in the US.

I agree with you in regards to the UK case, I need to get a lawyer specializing with the UK IPO, my current one doesn't specialize in trademark cases but gave me some advise as it looks like I am going to have to oppose the trademark application from Germany just to protect my company name.

Sorry again for the nasty comment regarding English I thought you were being sarcastic or disregarding my question about how it currently stood in the US alone.

Thanks

Sonic-x

If you are using your trademark on goods and services in the UK, then you can potentially prevent the German company from using their trademark in the UK, based on trademark rights you have gained from use of your mark in the UK. You cannot, however, prevent the German company from expanding into the US based on your domain names only and you may not be able to prevent the German company from expanding into the US based on the fact that you market your UK goods to US citizens from your UK-based website.

You must first establish your brand and market your brand in the US to gain trademark rights in the US. You can register your mark once you use your trademark in commerce in the US or you can submit an Intent-to-Use application in the US if you intend to market your goods in the US within a short period of time.

An example: I can purchase a product from Singapore from a Singapore company's online site. My purchase does not give the Singapore company trademark rights in the US just because I can purchase these Singapore goods offered on this Singapore-based website.

As to whether the German company can prevent you from using your domain names that have "their" trademarked name in them, it is possible. But it gets complicated, there must be some evidence of consumer confusion, and there are many many similar domain names that peacefully coexist, so similarity alone is not enough for the German company to prevent you from using your domain names.

Because I am providing just a little bit of information here, and there are exceptions that may apply, and everything in law depends on the specific facts present in any one situation, you may wish to visit the US Patent and Trademark Office website at http://www.uspto.gov for a better look at the law in the US.

And, again, sitting down with a lawyer in your own area is probably the best way for you to determine what rights you have now and how you can best protect them and expand them.

Good luck.