Q: Who gets the trademark when multiple small businesses use the same or a very similar name?
My small bakery business name is not currently registered on USPTO as a bakery, but several bakeries in other states have websites or social media pages with the same or a very similar name. I'd like to register it, but am wondering if I will lose the non-refundable application fees since some of these businesses have been in existance longer than mine has-though they are in different states. Does that matter... or is it first come and first to pay the fees, first served on who gets the trademark? They all seem to be small businesses just like me. I'm not sure if anyone has bothered with the expense since they don't intend to grow larger. Thanks so much for your time.
A:
When it comes to trademarks, priority matters most. Priority is established by using a mark, in commerce, in conjunction with the offering of particular goods and services. Generally, first to use in commerce gets priority rights to the mark, though there is an exception in that you can file an "intent to use" application for a mark not yet used in commerce and, assuming the application is approved, and you eventually use the mark in commerce, reserve the mark with a priority date of the application date.
Here the critical question is one of interstate commerce. To qualify for federal registration you (and any of the other bakeries) would have to be using the mark in the sale or transport of goods or the rendering of services in commerce between more than one state or U.S. territory, or in commerce between the U.S. and another country. Until and unless one of the users of this or a similar mark meets that interstate commerce requirement, none is entitled to federal registration.
Obviously, that is a threshold issue that must be addressed before any other factors are considered (and there are other factors to be considered, none of which can be addressed without know the actual mark, etc.)
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