Ratings. Guidance. The Right Lawyer.
I am in the final process of receiving a trademark and recently found the name I am trademarking was copyrighted in 1991
Decatur, GA
Viewed 51 times.
Posted about 1 month ago in Trademark Infringement
Flag as objectionable
I have researched person/company who has the copyrighted name and they are not actively using it. I have already been using the name on my product since 2007 and do not want to have to rename it. So once I get it trademarked will I be able to legally use it.
Additional information
They have not trademarked the name. They have just copyrighted the name. So basically if I am granted a trademark I will be using thier copyrighted name. It's my understand titles are not protected by either copyright or trademark. Wouldn't this apply to this situation. Also, although the name is exactly the same and in the same field, the products are not the same. Answers (4)
Pamela Koslyn
This attorney is licensed in California.
Posted about 1 month ago.
Flag as objectionable
Do you mean they trademarked the name? You probably can't be sure that they're not actively using the name, and it's not smart to claim rights to a mark that you know is already in use. You may be setting yourself up for them opposing your TM application if you get the mark published for opposition, and even if they don't oppose your use of the mark at that time, they could later. You don't indicate whether their use preceded yours - if so, they would have superior rights to yours.
You're best off consulting a TM lawyer to fully disclose your situation and get an analysis of their TM rights and your TM rights. Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship. 
Steven L. O'Donnell
This attorney is licensed in Pennsylvania.
Posted about 1 month ago.
Flag as objectionable
As Ms Koslyn noted, they might oppose your registration, but if they're not using it they're probably not going to care. Still, there are a number of things you still should address with an IP attorney such as the similarity between your product and the old product, whether they had ever registered it, maybe the status of the company associated with the mark (assuming there was one) and the geographical market of the old product. It's better to avoid a headache that treat one.
Kevin Andrew Thompson
This attorney is licensed in Illinois.
Posted about 1 month ago.
Flag as objectionable
You have raised an interesting question which implicates Federal trademark law as well as common law trademark rights. You are correct that titles of single works normally do not qualify for copyright or federal trademark protection. Still, the company or person may have common law rights based upon their use of the mark in commerce. You should discuss these issues with a lawyer in your jurisdiction.
Clark AD Wilson
|
