Originally posted by: UDT89
a buddy and i have an idea for a company. we came up with the name etc. we checked the trademark office, copyright office and there is no record of the accronym we're going with.
but there is a company that already is using the accronym. what happens if we register the trademark? can we take over the business? what if i tried to trademark their logo?
i hate doing business like this, but we're so far along and done our homework that there is no legal way they have the rights to this name.
i'm debating hiring a lawyer.....or just winging it and going for it and see what happens.
Hey there. Lemme see if I can help you out. My specialty is patents, not trademarks, but I know a bit about trademark law, so here goes.
First things first, trademark rights are not like patent rights. Patent rights in the U.S. arise from the constitution, and are given to the first person to invent a new machine, compoisition of matter etc. Trademark rights, on the other hand, arise from the common law, and are given to the first person to use IN COMMERCE a non generic, non-merely descriptive, non-functional term as an indication of the source of goods or services.
That said, the individuals that are currently using the acronym you mention likely have common law trademark rights in the term. Even though they have not federally registered the term as a mark, they will likely be deemed to have priority to it, unless you can show that they are not using the mark as an indicator of the source of goods or services.
This is not to say that you cannot federally register the mark. There is case law that supports the registration of a term by a second comer if the first person to use the term did not use it "in commerce." However, in that case the second comer (L'Oreal) wrote the initial user (a hair salon) several times inquiring as to whether the initial user used or intended to use the mark in commerce to indicate the source of goods or services. Each time, the initial user replied "maybe." In the meantime, L'Oreal federally registered the term as a mark in the PTO, and when the initial user sued to have the mark invalidated, the court held for L'Oreal, because they acted in good faith and made extensive use of the mark in commerce, whereas the initial user had merely a "hope" of using the mark in commerce.
As for "taking over the business," in short the answer is no. If you succeed in federally registering your acronym, you can force users of confusingly similar marks to change their name, but that does not mean you get to "take over" their business.
Note that it is possible to have marks registered to multiple companies in what is called a "concurrent use" registration. Although not common, this type of registration frequently happens in situations where the initial user is a small company using the mark locally, and there is a larger concurrent user of the mark who is using the mark over a much larger area..
"there is no legal way they have the rights to this name."
As mentioned above, Trademark rights are based in the common law. If the prior user used the term in commerce to identify the source of goods or services, they DO have rights to the mark, albeit only common law rights.
"i'm debating hiring a lawyer.....or just winging it and going for it and see what happens."
Hire a lawyer. Trademark law is full of pitfalls that are not ncessarily obvious. You could end up with an invalid registration, or worse, a mark that is deemed to be abandoned or gone generic. In the trademark world, having a mark go generic is called "genericide" for a good reason. Namely, once a term is considered generic, ANYONE can use it, and it is not considered eligible for trademark protection (unless it is "recaptured" from the public domain, i.e., as in the "Singer" (sewing machine) case).