Using a servicemark used in another state??

[Elizasmom]

What is the name of your state? VA

I thought of a great name for my new kid's music program. Then I went to the internet and discovered that a small company in another state has registered the domain and runs a kid's music program under the same name. Since this name is a servicemark, does this person have protection throughout the US just by the fact that she was the first to use it, or is she only protected in her state? She has not registered it with the USPTO, and does not put SM next to the name, but I would consider it a servicemark. If she doesn't have rights now, what if her company later expanded into my state?

I am really confused about this, and I can't seem to get a clear answer. Some things I read give the impression that if you use a trade or servicemark anywhere you are protected everywhere. If that is so, it doesn't leave many names to choose from. Everything I can ever think of is taken somewhere. Please help!

 

[divgradcurl]

What is the name of your state? VA

I thought of a great name for my new kid's music program. Then I went to the internet and discovered that a small company in another state has registered the domain and runs a kid's music program under the same name. Since this name is a servicemark, does this person have protection throughout the US just by the fact that she was the first to use it, or is she only protected in her state? She has not registered it with the USPTO, and does not put SM next to the name, but I would consider it a servicemark. If she doesn't have rights now, what if her company later expanded into my state?

I am really confused about this, and I can't seem to get a clear answer. Some things I read give the impression that if you use a trade or servicemark anywhere you are protected everywhere. If that is so, it doesn't leave many names to choose from. Everything I can ever think of is taken somewhere. Please help!

If the mark isn't registered with the USPTO, then this person doesn't automatically have protections nationwide -- but it's not necessarily confined to a particular state either. The scope of the protection for the mark will depend on the geographical "range" where the mark is used -- if it's used nationwide, then it gets nationwide protection. A URL or website does not necessarily mean that the use is nationwide -- many local businesses have websites as well, and that doesn't give the local business nationwide protection -- so you need to look at where the business is actually done to determine geographic scope.

 

[Elizasmom]

If the mark isn't registered with the USPTO, then this person doesn't automatically have protections nationwide -- but it's not necessarily confined to a particular state either. The scope of the protection for the mark will depend on the geographical "range" where the mark is used -- if it's used nationwide, then it gets nationwide protection. A URL or website does not necessarily mean that the use is nationwide -- many local businesses have websites as well, and that doesn't give the local business nationwide protection -- so you need to look at where the business is actually done to determine geographic scope.

Thank you! That is very helpful. Now, what if she were to expand into my state? Would she have a case there since she used it first, but in another state? Also, what if she tried to register with the USPTO after I started using the mark?

 

[divgradcurl]

Thank you! That is very helpful. Now, what if she were to expand into my state? Would she have a case there since she used it first, but in another state? Also, what if she tried to register with the USPTO after I started using the mark?

If you acquire rights in a geographical area, you may be able to prevent others from moving into your geographical area who are using the same or a similar name. When you are talking about common-law trademarks (like we are here), then first use in a particular geographical region is what's important, not just first use anywhere.

Registered trademarks are a bit different -- once you obtain a registered mark, it is valid and enforceable anywhere in the U.S., not just one or more geographical areas where you are using the mark. However, a registration does not give someone the right to keep "senior" users of the mark from using the mark -- so if you have already established rights before she registers, then you can normally continue to use the mark. However, you will not be able to expand your current geographical region and continue to use the mark,

 

[davezan]

Just an add-on that domain names don't give automatic trademark rights, either. It can't be
helped some people foolishly believe such.