3 ms·

You don't lose trademark rights just because someone else files a trademark on a name you're already using in commerce prior to that registration. In fact, trad

by rexreed 13y ago

You don't lose trademark rights just because someone else files a trademark on a name you're already using in commerce prior to that registration. In fact, trademark rights are common law rights -- you don't need to file a trademark to claim a priority right to that mark. In this case, his prior usage trumps any attempt for Adecco to claim ownership on the mark for their subsequent usage -- no matter how much they try to register those rights with the government. A trademark registration is exactly what it sounds like a - registration of a mark with the government. It doesn't give you any rights to ownership over a mark that pre-existed the registration.

comrade1 13y ago
You're confusing copyright and trademark. If he didn't challenge the trademark registration in the required period he will have a nearly impossible time challenging it now.
- rexreed 13y ago
  You don't lose rights to a pre-existing mark, even if someone subsequently registers it. And a challenge is only valid during an opposition period for a registered mark. This mark is not yet registered! So yes, he could challenge it during opposition. As indicated by the USPTO TESS Database, the mark was filed on April 9, 2013, but it hasn't even been processed, let alone registered by the US PTO [5]. This means that the opposition period hasn't come yet. That means that oh yes sirree, Turner definitely has a chance to oppose this mark! And oppose he will. And win he will. So, nothing lost here. A TM symbol confers no rights to the claimant other than common law rights, which Turner has a pre-existing claim on. But he wouldn't even need to challenge it - a subsequent registration does not entitle ownership for pre-existing marks. See all the citations below [1-4] [1] http://www.bitlaw.com/trademark/common.html http://www.bitlaw.com/trademark/common.html [2] http://www.uspto.gov/faq/trademarks.jsp#_Toc275426712 http://www.uspto.gov/faq/trademarks.jsp#_Toc275426712 [3] http://tcattorney.typepad.com/ip/2008/06/what-are-common.html http://tcattorney.typepad.com/ip/2008/06/what-are-common.htm... [4] https://en.wikipedia.org/wiki/Trademark#Enforcing_rights https://en.wikipedia.org/wiki/Trademark#Enforcing_rights [5] http://tess2.uspto.gov/bin/showfield?f=doc&state=4808:jyex1k.2.1 http://tess2.uspto.gov/bin/showfield?f=doc&state=4808:jyex1k...
  - comrade1 13y ago
    Ah, great. So he does have time to oppose it. Even though it's relatively simple to oppose he'll probably still have to put up a ~$6K retainer for a lawyer to oppose. And if he wanted to challenge their use of his trademark (even though he didn't register yet) he'd probably have to pay out ~$25K for a retainer, but realistically, he'd probably spend around $50k to challenge use of the trademark. Further, if he wasn't using the trademark for commerce but the new registration is using it for commerce he isn't guaranteed to win. Trademark is not the same as copyright - that's why apple can take over the apple trademark for music.
  - anigbrowl 13y ago
    That's all fine, but in the meantime his business model has fallen apart and his opposition to the marketing firm has zero economic value. He can relaunch, most likely, but it's going to be a lot more expensive and time-consuming than filing for a mark in the first place would have been.
- deleted 13y ago
  [deleted]
scoot 13y ago
Nobody has registered anything. They're claiming it as a Trademark (TM) not as a Registered Trademark (R).
- rexreed 13y ago
  Exactly. This is why this has nothing to do with Trademark law. They are stepping on a mark that's already being used in commerce by someone else. Their attempt to claim ownership through TM doesn't really grant them any rights in usage. And yes, they are attempting to register the mark. It won't go far.
mark-r 13y ago
In this case I don't think a trademark would be possible, being based almost entirely on another popular (possibly trademarked) phrase. Has Adecco actually tried to claim trademark for themselves?
- rexreed 13y ago
  Yes - they attempted to register it on April 9, 2013, according to the USPTO. But it hasn't even been examined yet. My guess is that it will fail on a common law basis, and even if it doesn't, it will be subject to an opposition period, and it will be opposed. And it will not be granted. See here: http://tess2.uspto.gov/bin/showfield?f=doc&state=4808:jyex1k.2.1 http://tess2.uspto.gov/bin/showfield?f=doc&state=4808:jyex1k...
anigbrowl 13y ago
His failure to register it means he can't sue them for damages either; at most he can obstruct their acquisition of trademark status. A fine example of why startups should have a legal strategy as well as a technical one, a marketing one, and so on.

by rexreed 13y ago

comrade1 13y ago

You're confusing copyright and trademark. If he didn't challenge the trademark registration in the required period he will have a nearly impossible time challenging it now.

rexreed 13y ago
You don't lose rights to a pre-existing mark, even if someone subsequently registers it. And a challenge is only valid during an opposition period for a registered mark. This mark is not yet registered! So yes, he could challenge it during opposition. As indicated by the USPTO TESS Database, the mark was filed on April 9, 2013, but it hasn't even been processed, let alone registered by the US PTO [5]. This means that the opposition period hasn't come yet. That means that oh yes sirree, Turner definitely has a chance to oppose this mark! And oppose he will. And win he will. So, nothing lost here. A TM symbol confers no rights to the claimant other than common law rights, which Turner has a pre-existing claim on. But he wouldn't even need to challenge it - a subsequent registration does not entitle ownership for pre-existing marks. See all the citations below [1-4] [1] http://www.bitlaw.com/trademark/common.html http://www.bitlaw.com/trademark/common.html [2] http://www.uspto.gov/faq/trademarks.jsp#_Toc275426712 http://www.uspto.gov/faq/trademarks.jsp#_Toc275426712 [3] http://tcattorney.typepad.com/ip/2008/06/what-are-common.html http://tcattorney.typepad.com/ip/2008/06/what-are-common.htm... [4] https://en.wikipedia.org/wiki/Trademark#Enforcing_rights https://en.wikipedia.org/wiki/Trademark#Enforcing_rights [5] http://tess2.uspto.gov/bin/showfield?f=doc&state=4808:jyex1k.2.1 http://tess2.uspto.gov/bin/showfield?f=doc&state=4808:jyex1k...
- comrade1 13y ago
  Ah, great. So he does have time to oppose it. Even though it's relatively simple to oppose he'll probably still have to put up a ~$6K retainer for a lawyer to oppose. And if he wanted to challenge their use of his trademark (even though he didn't register yet) he'd probably have to pay out ~$25K for a retainer, but realistically, he'd probably spend around $50k to challenge use of the trademark. Further, if he wasn't using the trademark for commerce but the new registration is using it for commerce he isn't guaranteed to win. Trademark is not the same as copyright - that's why apple can take over the apple trademark for music.
- anigbrowl 13y ago
  That's all fine, but in the meantime his business model has fallen apart and his opposition to the marketing firm has zero economic value. He can relaunch, most likely, but it's going to be a lot more expensive and time-consuming than filing for a mark in the first place would have been.
deleted 13y ago
[deleted]

scoot 13y ago

Nobody has registered anything. They're claiming it as a Trademark (TM) not as a Registered Trademark (R).

rexreed 13y ago
Exactly. This is why this has nothing to do with Trademark law. They are stepping on a mark that's already being used in commerce by someone else. Their attempt to claim ownership through TM doesn't really grant them any rights in usage. And yes, they are attempting to register the mark. It won't go far.

mark-r 13y ago

In this case I don't think a trademark would be possible, being based almost entirely on another popular (possibly trademarked) phrase. Has Adecco actually tried to claim trademark for themselves?

rexreed 13y ago
Yes - they attempted to register it on April 9, 2013, according to the USPTO. But it hasn't even been examined yet. My guess is that it will fail on a common law basis, and even if it doesn't, it will be subject to an opposition period, and it will be opposed. And it will not be granted. See here: http://tess2.uspto.gov/bin/showfield?f=doc&state=4808:jyex1k.2.1 http://tess2.uspto.gov/bin/showfield?f=doc&state=4808:jyex1k...

anigbrowl 13y ago

His failure to register it means he can't sue them for damages either; at most he can obstruct their acquisition of trademark status. A fine example of why startups should have a legal strategy as well as a technical one, a marketing one, and so on.