QUESTION
Can my common law trademark defeat a registered trademark?
Asked on May 21st, 2021 on Intellectual Property - Nevada
More details to this question:
I began using a word and logo with that word in early 2019. I did not register it yet because I was building momentum with it. I put it in my website, documents, and used it other places. I have witnesses and the documents to show I've been using it since 2019. About 18 months later someone registered the word with the trademark office when I began preparing to register it. They registered it in my area/section. They have done nothing with it the six months they have had it. I have sent them a letter, registered mail, telling them I've had a common law trademark since early 2019 and ask for their cooperation. My question is do I have a case for this trademark with my common law trademark? Can I force them to assign the federal trademark over to me? I'm even willing to reimburse the trademark fees. I'm in Las Vegas but this person is in Stamford CT
1 ANSWER
Rob, the short answer is that common law rights may be used to defeat a federal trademark registration, but there are caveats. Your common law rights give you rights in the trademark only in the geographic areas in which you are doing business; if you are online and selling goods throughout the U.S., then you potentially have rights throughout the U.S. Often, a coexistence agreement is carved out so that the junior trademark user only uses his/her mark in the areas you are not using yours. There are lots of facts to delve into here, especially whether "likelihood of confusion" does in fact exist.
Hope this helps
Lisa Dunner
Answered on May 24th, 2021 at 6:52 AM