Trademark Registration.

[Ricker33]

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

Lets say someone registers for a Trademark. While it is going through the system to become registered would they have the rights to it to file a civil lawsuit on Trademark infringement?

Would the same answer for the above apply to a Trademark owner who let their Trademark expire? Then reapply with the same name but in a different class? Do they have Lawsuit rights while still not fully registered?

Thank you

 

[quincy]

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

Lets say someone registers for a Trademark. While it is going through the system to become registered would they have the rights to it to file a civil lawsuit on Trademark infringement?

Would the same answer for the above apply to a Trademark owner who let their Trademark expire? Then reapply with the same name but in a different class? Do they have Lawsuit rights while still not fully registered?

Thank you

Trademarks gain their rights through the use of them in commerce. Registration of a mark is not necessary.

So, the answer to your first question is yes. A trademark holder can assert his rights in his mark whether his mark is registered federally or with the state.

Trademark rights do not necessarily expire when the registration is allowed to expire.

Anyone can sue anyone else for pretty much any reason at all. This applies to lawsuits over trademark rights just like it applies to all other areas of the law. But people are generally smart enough not to sue someone just for the heck of it.

 

[Ricker33]

Trademarks gain their rights through the use of them in commerce. Registration of a mark is not necessary.

So, the answer to your first question is yes. A trademark holder can assert his rights in his mark whether his mark is registered federally or with the state.

Trademark rights do not necessarily expire when the registration is allowed to expire.

Anyone can sue anyone else for pretty much any reason at all. This applies to lawsuits over trademark rights just like it applies to all other areas of the law. But people are generally smart enough not to sue someone just for the heck of it.

When you say use them commerce. His original Trademark was for a social media site. Then it changed to a ebayish style site. The site is running, but everything is EXAMPLE. Would that mean he has used them in commerce?

I ask this because he is sending me cease and desist letters for either the full use of my business name or the domain. I am actually not sure. He letters are confusing. One he talks about injunction on my server host, then now we are to threats of a civil lawsuit. He gave me 30 days OR LESS to comply, but not sure to what. He says the names are to closely alike. I thought he was just a crazy person, but lets just say he had the gumption to go after a large search engine. Im just a small home based, handmade items, local event guy that wanted an online way for customers to find me. There is a small similarity. But at the time I started my business, he was in social media with classified adds. Now his new Trademark is in a different class but using the same name.

As a side note to this. I have been contacted by another domain owner he is threatening with lawsuits. Should I not respond to her? She only found me because he sent another Cease and Desist letter to her, but it was with all my information. As he says basically anything with ?oo?abox would be infringement. He has on his website a whole list of things he would contest cause he seems them as to similar.

Thanks again.

 

[quincy]

When you say use them commerce. His original Trademark was for a social media site. Then it changed to a ebayish style site. The site is running, but everything is EXAMPLE. Would that mean he has used them in commerce?

If the individual objecting to your use of the same or similar name is using the name to identify his social media site then the name is his trademark and your use of the same or similar name could confuse consumers into thinking you are connected in some way with his site when you are not. This can lead to a cease and desist notice, an injunction preventing your use, and potentially a trademark infringement suit.

For example, you cannot use the trademark "Facebook" to identify your own social networking site without infringing on rights.

I ask this because he is sending me cease and desist letters for either the full use of my business name or the domain. I am actually not sure. He letters are confusing. One he talks about injunction on my server host, then now we are to threats of a civil lawsuit. He gave me 30 days OR LESS to comply, but not sure to what. He says the names are to closely alike. I thought he was just a crazy person, but lets just say he had the gumption to go after a large search engine. Im just a small home based, handmade items, local event guy that wanted an online way for customers to find me. There is a small similarity. But at the time I started my business, he was in social media with classified adds. Now his new Trademark is in a different class but using the same name.

If the cease and desist letters are confusing to you, that would be a good reason to have them personally reviewed by an IP attorney in your area. You do not want to ignore a threat of a lawsuit. How you respond to the threat depends on how legitimate the threat is.

As a side note to this. I have been contacted by another domain owner he is threatening with lawsuits. Should I not respond to her? She only found me because he sent another Cease and Desist letter to her, but it was with all my information. As he says basically anything with ?oo?abox would be infringement. He has on his website a whole list of things he would contest cause he seems them as to similar. ...

All trademark holders are responsible for policing the marketplace and stopping infringement on their marks, or risk losing all rights to their marks. The first action most trademark holders will take when they find someone they believe is infringing on their marks is to send cease and desist letters. This can stop infringers from infringing. If the infringement continues, the next action a trademark holder will take to enforce his rights is to sue the infringer.

Whether your use of the same or similar name is, in fact, infringing requires a personal review of the actual trademarks in question and how they are being used. We cannot do personal reviews on this forum. That goes beyond the scope of this forum.

I suggest you have everything reviewed by an attorney in your area so the attorney can assist you in deciding how to respond to the notices you have received. I would not respond or meet the trademark holders' demands until you have had this personal review.

Good luck.