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2 business register same trademark

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SKAYD

New member
I’ve been in business and owned my website that has been operating for over 6 years. I can provide proof of all social media account dates, website start dates, DBA registration etc etc
I registered the name 3 months ago with USPTO when I realized someone was using it for the EXACT same category but in a different state. I tried to be friendly and request them to stop using, but with no luck.
The other individual has now attempted to trademark the same name but added their states initial at the end. It would be like if I had tennis shoes that now I want to call New Balance CA because I’m in “California”
I’m still awaiting trademark assignment to a lawyer, but is there anything I need to be concerned about?

Sarah
 


quincy

Senior Member
I’ve been in business and owned my website that has been operating for over 6 years. I can provide proof of all social media account dates, website start dates, DBA registration etc etc
I registered the name 3 months ago with USPTO when I realized someone was using it for the EXACT same category but in a different state. I tried to be friendly and request them to stop using, but with no luck.
The other individual has now attempted to trademark the same name but added their states initial at the end. It would be like if I had tennis shoes that now I want to call New Balance CA because I’m in “California”
I’m still awaiting trademark assignment to a lawyer, but is there anything I need to be concerned about?

Sarah
What is the name of your state?

It does not sound as if the other company will have their trademark approved for federal registration if you registered your name first - but there is the possibility that they could challenge your registration.

Do you know the other company's date of first use of the mark?

Does the other company conduct business outside the state of California?
 

SKAYD

New member
What is the name of your state?

It does not sound as if the other company will have their trademark approved for federal registration if you registered your name first - but there is the possibility that they could challenge your registration.

Do you know the other company's date of first use of the mark?

Does the other company conduct business outside the state of California?
Yes... theirs was Nov 2017 yes they are in Midwest Kansas
My first use... June 2012 in California

I clearly used and have been using for years before them
 

FlyingRon

Senior Member
Are the products complete competitors or are the marks just very close? Years ago we had a trademark for "Xcalibur" a high resolution imaging system for defense and medical applications (not my Idea of a product name, I told them nothing that is X followed by anything). There was also a company that sold document imaging called "Excalibur." After a lot of cease and desist letters going back and forth we reached an amicable settlement that we'd keep our trademarks but diligently refer inquiries that really belonged to the other company to them.

Years later I was the VP of Product Development for a company called Sensor Systems. It turns out there are a number of near misses on that mark as well, notably a company in California (bigger than us) that sold GPS antennas. Again, we proactively just refer people who are confused to the right company.
 

quincy

Senior Member
Good. The dates of first use are helpful. :)

From what you state here, you should be considered the owner of the mark. You are the "senior user" of the trademark and the first to federally register the mark.

If the Kansas company's goods/services are in the same class as your goods and services, not only would the USPTO not approve a same-name mark for registration or a substantially-similar mark for registration, the other company would have difficulty opposing your registration or petitioning the USPTO for cancellation of your registration.

There are a few exceptions that potentially could complicate matters for you, however. Specifics always matter.

One possible complication could be if consumers have connected the Kansas trademark to the Kansas company's goods/services. Even geographic recognition of the mark for the Kansas company could allow the Kansas company the right to continue with (limited) use of the mark in their area.

As registered owner of the mark, however, you are able to enforce your rights and potentially prevent all others from using the same or similar name.

Because you have tried cease and desist letters with no success, and because the Kansas company appears ready to fight for continued use of their mark, you probably will want to have the facts personally reviewed by an IP attorney in your area.

Good luck.
 
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SKAYD

New member
Yes... theirs was Nov 2017 yes they are in Midwest Kansas
My first use... June 2012 in California

I clearly used and have been using for years before them
Are the products complete competitors or are the marks just very close? Years ago we had a trademark for "Xcalibur" a high resolution imaging system for defense and medical applications (not my Idea of a product name, I told them nothing that is X followed by anything). There was also a company that sold document imaging called "Excalibur." After a lot of cease and desist letters going back and forth we reached an amicable settlement that we'd keep our trademarks but diligently refer inquiries that really belonged to the other company to them.

Years later I was the VP of Product Development for a company called Sensor Systems. It turns out there are a number of near misses on that mark as well, notably a company in California (bigger than us) that sold GPS antennas. Again, we proactively just refer people who are confused to the right company.
Yes they are the exact same name and exact same category. (Women’s apparel). The biggest difference is I sell women’s, home, girls and baby so I’m more diverse. Literally her Instagram handle is exact same except she added a _
She uses Shopify and added boutique at end
So if I was
babygirl.com
She picked babygirlboutique.com
Are there any concerns or things they might try and say to discredit me?
 

quincy

Senior Member
Yes they are the exact same name and exact same category. (Women’s apparel). The biggest difference is I sell women’s, home, girls and baby so I’m more diverse. Literally her Instagram handle is exact same except she added a _
She uses Shopify and added boutique at end
So if I was
babygirl.com
She picked babygirlboutique.com
Are there any concerns or things they might try and say to discredit me?
Yes. There are concerns. She has ignored your request to stop using your trademark. :)

You cannot stop someone from saying things. There are only legal actions that potentially can be pursued in response to what is said.

You should have your trademark and goods, and the other company's trademark and goods, personally reviewed by a trademark attorney in your area. Although company trademarks that are the same or similar can and do peacefully coexist (e.g., Dove ice cream and Dove soap), consumer confusion can be generated if the companies that share names also market the same goods or services to the same people in the same geographic area.

Good luck.
 

SKAYD

New member
Yes. There are concerns. She has ignored your request to stop using your trademark. :)

You cannot stop someone from saying things. There are only legal actions that potentially can be pursued in response to what is said.

You should have your trademark and goods, and the other company's trademark and goods, personally reviewed by a trademark attorney in your area. Although company trademarks that are the same or similar can and do peacefully coexist (e.g., ABC Warehouse and ABC network), consumer confusion can be generated if the companies that share names also market the same goods or services to the same people in the same geographic area.

Good luck.
We technically operate in different geographic area (me west coast and her Midwest) BUT we don’t have free standing stores and operate both online businesses
 

quincy

Senior Member
We technically operate in different geographic area (me west coast and her Midwest) BUT we don’t have free standing stores and operate both online businesses
If you and the other company market your goods nationwide (e.g., you sell to customers in Kansas and she sells to customers in California), consumers can be confused by the same/similar names being used to identify the companies and the goods.
 

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