Trademarking & prior use question

[aristocatz]

I was just reading about someone who decided to trademark a term that was relatively commonly used prior to them trademarking it. The person did not invent this name (as far as I know from what I was reading). They are now threatening to sue other people who currently use this term as the title of a social media community. The social media community had been in existence & using this name in their title for several years prior to it being trademarked. The community is just social media & not profiting in any way as far as I can tell.

Just wondering, is there a clause that protects prior use of a trademarked name of something (if the priorly established use is NOT for profit)? Or do all prior used entities now have to end if they do not obtain permission from the person who got it trademarked?

I tried to Google it, but I found conflicting answers, which makes me wonder if trademark laws differ from state to state....

Anyone know?

 

[marlynnp]

Reminds me of the Cafe Hon situation a couple of years ago.

And apparently you can get such a trademark. Don't know if you'd actually be able to enforce it in court however.

 

[Lilliputian]

People who used to use a term are supposed to be protected to some extent. I know my husband used to work for a company that was a chain with locations all over the country. The name of the company was a common name, like Bill's (but it wasn't Bill's). They also had a back-up name they used that wasn't a person's name and wasn't common in towns where there was already a company called Bill's. Even if it wasn't the same type of company, like if the old Bill's was a plumbing supply store and my husband's Bill's was a shoe store, they still had to have a name that wasn't Bill's. And they were trademarked.

Trademark laws are federal. I'm certainly not an expert, but I don't think there are variations by state.

 

[bcla]

In patent litigation it's called "prior art" if it can be proved that the crux of a patent was already in use before the patent history. I believe it goes as far back as the claim of when an idea was created and not when filed.

However, trademarks are different. Apparently the time after registration strengthens a claim, and a fresh registration may be subject to prior use claims making existing users' rights superior.

http://www.fr.com/news/prior-user-vs-federal-registrant-whose-mark-is-it-anyway1/

 

[bcla]

Basically, trademarks need to be actively protected. And the user of a name that wasn't trademarked needs to actively assert that it has a right to use the name before the trademark holder has it long enough that they can claim it hasn't been contested.

There are cases where trademark holders of old historic trademarks have used them in limited settings to prove they are still active. One example is Chevron, which used to be known as Standard Oil of California. They actually have some franchises around that carry the old "Standard" name.

 

[tvguy]

It is not uncommon for someone to claim use of a term before someone else trademarks it.

I am not sure it is a black and white situation which is why they so often end up in court. Sometimes it is more important who trademarked a term or name first than who used it first. Other times the usage can prompt a trademark to be revoked.

I have Jello and Kleenex in my house, but neither are made by the trademark holders.

 

[bcla]

It is not uncommon for someone to claim use of a term before someone else trademarks it.

I am not sure it is a black and white situation which is why they so often end up in court. Sometimes it is more important who trademarked a term or name first than who used it first. Other times the usage can prompt a trademark to be revoked.

I have Jello and Kleenex in my house, but neither are made by the trademark holders.

Those trademarks are actively protected by Kraft and Kimberly-Clark. Any manufacturer of a gelatin or facial tissue that would use those names as a product description would get sued in an instant. That you would prefer to them by those names in your house is of no concern to the trademark hold e RSVP.

 

[Geoff_M]

To the OP's question, prior use is a recognized defense in response to a trademark suit, put it is no guarantee that a prior user will prevail. As with other IP laws, there are few hard and fast rules. In the end the laws mostly provide guidelines that a judge may consider when rulings on such cases. In the case of trademark cases, the central issue usually boils down to the question of "would the use create confusion as to which entity is behind the product or service in the eyes of any average person?" Often times the nature of what the trademark holder is using the mark to makes a difference. Two companies can use the same trademarked name legally if the nature of their business is different. When Dominoe's Pizza became a national chain, the makers of Domino sugar tried to sue the pizza company for trademark infringement. They lost the case because the judge ruled, even though both companies were in the "food" business, no one was going to think that the sugar company was trying to branch out into the pizza business.

Also, being a not-for-profit isn't a factor in the law in terms of consideration. And yes, it's a federal law and doesn't vary by state.

 

[aristocatz]

To the OP's question, prior use is a recognized defense in response to a trademark suit, put it is no guarantee that a prior user will prevail. As with other IP laws, there are few hard and fast rules. In the end the laws mostly provide guidelines that a judge may consider when rulings on such cases. In the case of trademark cases, the central issue usually boils down to the question of "would the use create confusion as to which entity is behind the product or service in the eyes of any average person?" Often times the nature of what the trademark holder is using the mark to makes a difference. Two companies can use the same trademarked name legally if the nature of their business is different. When Dominoe's Pizza became a national chain, the makers of Domino sugar tried to sue the pizza company for trademark infringement. They lost the case because the judge ruled, even though both companies were in the "food" business, no one was going to think that the sugar company was trying to branch out into the pizza business.

Also, being a not-for-profit isn't a factor in the law in terms of consideration. And yes, it's a federal law and doesn't vary by state.

Thank you-this makes sense. I'm guessing, in the situation I was reading about, the social media page *might* be safe, since the person who trademarked it is using it to create a company that is far different than just a bulletin board type space.

 

[tvguy]

Those trademarks are actively protected by Kraft and Kimberly-Clark. Any manufacturer of a gelatin or facial tissue that would use those names as a product description would get sued in an instant. That you would prefer to them by those names in your house is of no concern to the trademark hold e RSVP.

My point being, the trademarked brand names in this case have evolved into the common names for the type of product.

If I ask for Kleenex in a store that only carries Puffs, they are going to point me to the isle with the Puffs.

 

[CPT Tripss]

My point being, the trademarked brand names in this case have evolved into the common names for the type of product.

If I ask for Kleenex in a store that only carries Puffs, they are going to point me to the isle with the Puffs.

Oops, you've done it again . . .

Maybe yes, maybe no. If it is a major retailer, and they really do not have the brand name you mention, they will likely direct you to the aisle with the facial tissues.

Trademark holders go to great lengths to avoid having their brand "aspirinized." You might find this article interesting. http://www.theatlantic.com/business...mark-and-other-appeals-to-journalists/380733/

Here are some conventional products that used to have trademarked names: videotape, aspirin, dry ice, cellophane, linoleum, thermos, and heroin. Oh, and also escalators, kerosene, and laundromats.

 

[ShelsGoingToDisney]

I have a small business creating and selling teaching resources. I registered the trademark of my business name, The Teaching Bank, in the category of educational goods and services. This means that nobody can use my name or logo to sell any type of educational materials. That is the only category it is protected in though. There is nothing I could do if someone opened a fast food joint and called it The Teaching Bank. Totally different category.

From what you are saying it sounds like your friend's business and the social media site are different type businesses, therefore they'd be in different trademarked categories and would both be able to use the name. Chances are the social media business owns the domain name as well and as long as they continue to pay for that domain they can keep it, no matter who owns the trademark. I am wondering if the thing you friend truly wants is the domain name? Doesn't matter, trademark cannot make you give up a domain name. You might not be able to use it, but as long as you pay your fees you keep the domain for yourself!

 

[aristocatz]

I have a small business creating and selling teaching resources. I registered the trademark of my business name, The Teaching Bank, in the category of educational goods and services. This means that nobody can use my name or logo to sell any type of educational materials. That is the only category it is protected in though. There is nothing I could do if someone opened a fast food joint and called it The Teaching Bank. Totally different category.

From what you are saying it sounds like your friend's business and the social media site are different type businesses, therefore they'd be in different trademarked categories and would both be able to use the name. Chances are the social media business owns the domain name as well and as long as they continue to pay for that domain they can keep it, no matter who owns the trademark. I am wondering if the thing you friend truly wants is the domain name? Doesn't matter, trademark cannot make you give up a domain name. You might not be able to use it, but as long as you pay your fees you keep the domain for yourself!

Here's where I think it gets confusing though-the two entities are sort of in the same category, but one is seeking profit under that name & within that category, the other is just running a free social media community where people share info about the category.

I guess a good example to describe it would be if the social media message board is a free board where members chat & share info about Disney Cruises, and the party who trademarked the name started up a business booking Disney Cruises & providing additional services for a fee. The message board with that name was around for several years before the other party trademarked the name & started their business. So, its the same category, but one party uses the name as the title of a social media site, the other party trademarked the name to use for a profiting business. The social media site is like a Google Plus or Facebook page. The person who trademarked the name bought a .com website under that name, so there is no issue there.

That is not the scenario I read about, just a similar situation. The two parties seem to be feuding & the person who trademarked the name was threatening to sue and shut down the other person's social media forum.

 

[ShelsGoingToDisney]

Here's where I think it gets confusing though-the two entities are sort of in the same category, but one is seeking profit under that name & within that category, the other is just running a free social media community where people share info about the category.

I guess a good example to describe it would be if the social media message board is a free board where members chat & share info about Disney Cruises, and the party who trademarked the name started up a business booking Disney Cruises & providing additional services for a fee. The message board with that name was around for several years before the other party trademarked the name & started their business. So, its the same category, but one party uses the name as the title of a social media site, the other party trademarked the name to use for a profiting business. The social media site is like a Google Plus or Facebook page. The person who trademarked the name bought a .com website under that name, so there is no issue there.

That is not the scenario I read about, just a similar situation. The two parties seem to be feuding & the person who trademarked the name was threatening to sue and shut down the other person's social media forum.

Sorry, not sure why I was thinking this person was a friend of yours!

Anyway, I would still venture to guess that they would be under different categories. The for profit business is probably under some retail/sales type (travel services if using your example) category whereas the other social media site is probably under some type of informational service category. Just because they cover the same type topic, Disney for instance, doesn't mean they'd be in the same category for trademark if they provide completely different services.

Just because you haven't registered a trademark, doesn't mean you don't own it. That's the difference between the circle with TM in it, and the ®. TM means trademarked, ® means registered trademark. Trademark is like copyright whereas it is yours as soon as you start to use it. It is just much easier to enforce in court if you've registered it. Honestly, if anyone in this case truly "owned" the exclusive rights I would say it was the non-profit social media site since they were using the name first.

 

[aristocatz]

Sorry, not sure why I was thinking this person was a friend of yours!

Anyway, I would still venture to guess that they would be under different categories. The for profit business is probably under some retail/sales type (travel services if using your example) category whereas the other social media site is probably under some type of informational service category. Just because they cover the same type topic, Disney for instance, doesn't mean they'd be in the same category for trademark if they provide completely different services.

Just because you haven't registered a trademark, doesn't mean you don't own it. That's the difference between the circle with TM in it, and the ®. TM means trademarked, ® means registered trademark. Trademark is like copyright whereas it is yours as soon as you start to use it. It is just much easier to enforce in court if you've registered it. Honestly, if anyone in this case truly "owned" the exclusive rights I would say it was the non-profit social media site since they were using the name first.

Thanks-this makes sense. I always wondered what the difference is between trademarked & registered.

No, not a friend of mine I very loosely belonged to the social media site (a member, but rarely participate) & don't know the person who trademarked the name. I just happened to have checked in on the social media site & read about the situation going on.

 

[CPT Tripss]

Trademark protection is an interesting area. Particularly when it involves a big outfit like Disney.

Those of you who have used, for many years,a variety of Disney related boards and sites may recall "dislive.com", a photo/video site. The site ceased operations, must be five years ago, after getting a cease and desist letter from an attorney for this site.

Now Disney asking a site to cease and desist using "Disney" in a web address is logical. Someone playing off and trying to profit from the reputation of a large, well known entity. Disney does it regularly and did it to disneyinfo.com, a website created as a direct predecessor to this site.

Makes ya wonder . . .

 

[Geoff_M]

Here's where I think it gets confusing though-the two entities are sort of in the same category, but one is seeking profit under that name & within that category, the other is just running a free social media community where people share info about the category.

I know that it's a common belief that somehow if one isn't attempting to turn a profit on someone else's intellectual property then legally our IP laws are willing to give that person a pass, but it isn't the case (with the possible exception being the "fair use" consideration of copyrighted material for educational use). While the profit making issue may be a consideration in determining damages if infringement is found to have happened, not seeking profit isn't a defense with such charges.

Also, it's worth noting that often times when trademark action is threatened against others (as has been noted as has been the case with the DIS), it's not done so necessarily with the belief that they will prevail in court, but the hope that the "other guy" will not want to pay for a threatened potentially costly court fight and instead throw in the towel and change their name. This tactic is perfect in cases where the "other guy" is a not-for-profit who doesn't likely have the resources to engage in such a battle.

 

[manning]

Basically, trademarks need to be actively protected. And the user of a name that wasn't trademarked needs to actively assert that it has a right to use the name before the trademark holder has it long enough that they can claim it hasn't been contested.

There are cases where trademark holders of old historic trademarks have used them in limited settings to prove they are still active. One example is Chevron, which used to be known as Standard Oil of California. They actually have some franchises around that carry the old "Standard" name.

This happened when Standard Oil of Indiana changed their name to Amoco.

You still saw some stations labeled Standard. This prevented another company from coming into their territory using the Standard name.