How do I protect my trademark?

Question

I have a company name (not logo) that I'd like to protect. My company name is registered with my state's government; however, another company is using the same name in another state. The other company has been around much longer than mine. Neither of us have registered the trademark with the USPTO.GOV.

If I register the trademark before they do, will I have control over the name even though they have been using it longer than me?

If so, can I take their domain name and force them to switch their company name OR sell them a license to use the name?

Answer 1

Wow, what a wonderful question.
The answer is that USE, not registration, creates trademark rights. Now registration can provide you with other benefits (such as a presumption of nationwide priority, an "incontestible" registration after a while) but it's priority of USE that matters.

Second, a trademark only applies to particular goods or services -- like TOP FLITE for "Golf Balls, golf clubs, and golfing related services. Technically, even though that company may own TOP FLITE, another company could own TOP FLITE for, say, "aviation training services," so long as there's no "likelihood of confusion" between the products and services.
Thus, if this other company, even if they have priority, uses the name in unrelated goods or services, than you can register and enjoy nationwide priority.

If this is untrue, then the best you can do is seek a "concurrent use" proceeding / application before the USPTO. There, you say "this company has priority, but it hasn't registered nationally, and its rights are limited to this geographic area... I want rights everywhere else." You can then effectively box them in to a small geographic area. While you can't force them to give up their name, you at least can get the better area.

(P.S. if you try to register the name nationwide without telling the USPTO, and you have actual knolwedge that they exist, and you get your registration, it may be subject to being cancelled in the future for fraud on the trademark office or because they had priority and their mark is likely to be confused with yours. Then you would have wasted a lot of your time and money. So be careful when going forward.)

(Domain names are oftentimes a different story. If they have legitimate rights in a domain name, and you don't have superior trademark rights, you probably can't get them to give up their domain name. Maybe, but not always.)

There are tons more things to say here, but that should give you a start. Since this is a complicated case, you really should talk to counsel who are experienced in trademark registration matters. Provide the information you have and see if they think that you can "Coexist," whether you need a concurrent use registration, or whether their priority "knocks you out."
(P.S. you can also negotiate with the other company, too, regarding your name...)

Good luck.

Answer 2

Ditto above. Great answer.