Marinette, WI asked in Trademark for Wisconsin

Q: I've since found out my audio group's online name is trademarked by a theatre company in the UK. I'm in the US (WI).

They call themselves "Foolsgold Theatre Company" and are (from what I understand) a stage theatre brand, while we call ourselves "Fools Gold Theatre Productions" and are strictly online creating audio. They've contacted me asking me to stop using it because they've been trading with the name since 2001. I understand their concern for confusion. However, I did a search for similar names in 2011 and it did not appear in the results. Even now, all can I find online are links to our pages or results for the "Fool's Gold" movie from 2008. And the link they sent me to prove their claim takes me to a Time Warner Cable Spectrum page. Further, our group name is not registered or trademarked - we simply use it collectively online and are not actually a business or making any profit. This is a hobby. Are we still required to change it?

EDIT: I've found out they originally had the name "Fortune's Fool Theatre Company Limited" until June 2011. We started using our name in May 2011.

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1 Lawyer Answer
Michael Gerity
Michael Gerity
  • Trademarks Lawyer
  • Phoenix, AZ

A: It would appear that the threshold issue here is whether or not they do business under that name in the United States (or whether you do business with yours in the UK). Trademark rights are geographical in nature. While the geographical nature has eroded somewhat due to the international nature of the internet, it still persists. The UK company has the rights to that name in the UK, almost certainly. However, if they have not been offering their theater services in the US under that name, then they have not established rights to the trademark here. Now, if they HAVE been using that name in commerce in the US, then they may well have rights here. Of course, we don't know the facts about this from the question presented. Once that is researched, the issue then would shift to priority of usage.

The issue of priority comes down to the first to use the mark in commerce within the geographic area in question. It sounds like they didn't start using this name anywhere until June of 2011, and if that is true, then their rights to the name would not have arisen until that time. If you started using your name in commerce (and be careful, because the use has to be "in commerce," which is a term of art) before them, at least in the US, then you could well have priority of use. Understand, however, that there are a couple of exceptions to the priority of use rules. For example, an "intent to use" trademark registration can be filed that secures rights to a name before it is ever used in commerce.

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