Using shortened version of trademarks

[Blues20]

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

I run a music festival, and currently have our logo/trademark in the application process. We found another festival in a another state with a similar name, and since we've been around 20 years longer than they have, we would like to protect ourselves against any possible litigation. We won't ask them to stop using their name, but we don't want the possibility of them doing it to us. So here's our predicament...

We're called (example) "Stone Mountain Blues Festival" with a logo and trademark being filed for "Stone Mountain Blues". Our patrons over the years have shortened it to "Stone Fest"; a title we use to call ourselves on Facebook, E-Mail and general conversation, but we never use in advertising, products, or any official capacity...This year we noticed a music festival called "Stone Fest" and advertises itself as such. Do we need to file a trademark or service mark for the term "Stone Fest" in addition to our logo and the name "Stone Mountain Blues"? We are filing under a concert/live entertainment usage (class 041), and since we don't use "Stone Fest" as anything but a shortened version of "Stone Mountain Blues Festival", should we file another application for "Stone Fest"?

Would they have any legal reason to tell us to stop using "Stone Fest"? And should we file a trademark for it just in case?

Thank You!

 

[quincy]

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

I run a music festival, and currently have our logo/trademark in the application process. We found another festival in a another state with a similar name, and since we've been around 20 years longer than they have, we would like to protect ourselves against any possible litigation. We won't ask them to stop using their name, but we don't want the possibility of them doing it to us. So here's our predicament...

We're called (example) "Stone Mountain Blues Festival" with a logo and trademark being filed for "Stone Mountain Blues". Our patrons over the years have shortened it to "Stone Fest"; a title we use to call ourselves on Facebook, E-Mail and general conversation, but we never use in advertising, products, or any official capacity...This year we noticed a music festival called "Stone Fest" and advertises itself as such. Do we need to file a trademark or service mark for the term "Stone Fest" in addition to our logo and the name "Stone Mountain Blues"? We are filing under a concert/live entertainment usage (class 041), and since we don't use "Stone Fest" as anything but a shortened version of "Stone Mountain Blues Festival", should we file another application for "Stone Fest"?

Would they have any legal reason to tell us to stop using "Stone Fest"? And should we file a trademark for it just in case?

Thank You!

It is the use of a trademark in commerce that gives the trademark holder rights to the mark, with the first to use the mark as an identifier for goods/services the presumed owner. Registration of the mark in the US is not necessary but provides public notice that the mark is in use and provides benefits in the event a mark is infringed.

If you know someone else is using the same mark or a mark that is confusingly similar to the one you are using as an identifier, it is up to you as the original trademark holder to enforce your rights to the mark or you risk losing your rights entirely.

Once your mark, and variations thereof, become connected in consumers minds with your specific festival, the name and the variations can be protected from use by others, with or without registration.

That said, if the shortened version of your name is being used by someone else and has become a recognized identifier for their festival, you might expect the holder of those rights to challenge your use of their name.

You can have the actual names involved personally reviewed by an IP attorney in your area to get an assessment of your risks.