TenaciousTees

Hey folks, I was wondering if you can give me feedback based on experience. I have a design that I wanted to register with the uspto.gov office and come to find out that the name of the potential clothing line for the future is registered in the state. Have any of you encountered this before?, and if so what should you recommend? does the uspto.gov take presence over the states? Should I keep going with registering the design/name?. (PS: I know we are not attorneys but I still greatly appreciate your feedback).

 

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kimura-mma

If you want to register a design, that would be a copyright and you would do that through the Copyright Office. The USPTO would be for trademarks, but you would need to register a brand name or logo, not a design. So just make sure you apply for the right registration wit the right office.

The existing registration at the state level will take precedence over any federal registration within that state only. The federal registration will take precedence in any other state.

I would say the biggest question is... Is the existing registration filed in your state, or another state? If it is in your state, you would have an issue since you would not have ownership in your own state. So it probably would be best not to proceed.

If you do decide to proceed, you should definitely contact an intellectual property attorney and understand any pros and cons of these types of situations. They would give you an indication of how the registration offices handle these issues, as well as how the other company may handle an opposition of your application. You would essentially be "blocking" their ability to expand their mark. Their state registration may help them oppose your application. Also, even though they are only registered at the state level, if they could prove that they sell branded product to other states, they would have established common law trademark in those states.

__________________
A Brand With No Name : Ready Made T-shirt Designs

 

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Austin300

The US patent and trademark office handle trademarks and service marks.

They also handle designs when it comes to
a company logo. Many are confused about
what a copyright and a trademark/ service mark
cover.


This is the link to the federal trademark search site.

http://www.uspto.gov/trademarks/index.jsp

Do a search at the Trademark section and you will
find numerous trademarked logos and designs
and other images they are using.

Cabelas has a design secured and they also
have the name of their company as another
form of trademark / service mark

Trademarks and service marks come under
common law . If a mark is unique
and is used first by an entity then they are
considered to have the first use.

The Federal trademark office will do an investigation
to determine if the mark is in use and who is
using it.

Most states do not check the federal trademark
register because that burden is on you.

If someone is already using a name you wish to
use at only the state level they have the first use
of that trademark / service mark and trying to
secure the name at the federal level will more than
likely be denied and or cause litigation down the road if the
original user had first use.

Trying to "beat them to the mark" at the federal level is often
a waste of time and money. Common law is nationwide and
trademarks are covered even if not registered if the mark
is distinct.

There are also brands that never get a trademark for their
company name but they hold great power in it's use. They
don't need a federal trademark because of common law but
a trademark allows legal ramifications for those that attempt
to import goods using the same name/mark etc.

Names that are not unique will not receive a federal trademark/
service mark unless you can prove they are and this may take
an attorney to represent you with the assigned trademark attorney
from Washington.

If Cabelas set up shop years ago and was selling
items nationwide without a federal trademark they would
normally still be protected under the federal common law.
It is a unique name and their products are sold across
state borders.


You will spend about $375 dollars for just the
filing fee for a federal trademark.

 

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