Q: With a trademark application, is it possible to list colloquial variations of your trademark name?
When you trademark a name, I know that variations are covered under the idea that they create conflict but is it possible to list known variations that are used colloquially under the same application or do they all need to be done separately? For example if the official name is Product-X Service Network but is know colloquially as ProductX or Product X or Product X Service are all of those covered under the same tradaemark or do they all have to be listed out?
Additionally, I'd read that if you can prove you've used a certain name for a certain period of time (We've used Product X Service Network online and actively since 2007) that there is an understood trademark that, while not legally enforceable in a court of law, can be used to send cease and desist to infringing competitors in the same service market. Is that true?
A: Your issues are a bit unclear, but these principles might be helpful:
1. The underlying right to use a particular trademark is acquired by actual use in commerce.
2. For a mark used in commerce but not registered with the U.S. Trademark Office, the geographical scope of protection extends to the geographical reach of actual use of the mark in commerce.
3. For a mark registered on the Principal Register of the U.S. Trademark Office, that mark enjoys protection against infringement nationwide even in states where the mark may not yet be in use in commerce.
4. A mark is protected from infringement to varying degrees depending upon a variety of factors, including, the "strength" of the mark, its length of use in commerce, money spent promoting the mark to consumers etc.
5. A person or company has an affirmative obligation to not adopt and use in commerce a mark that is confusingly similar to one already in use by another person or company ("infringes" another's trademark).
6. Courts determine whether or not one mark infringes another by application of a number of factors, the most important of which are generally considered to be (1) similarity of marks, and (2) similarity of goods or services on or in connection with which the respective marks are used in commerce).
7. If a trademark is not "legally enforceable" in a court of law, it is possible that it does not function as a trademark at all to identify the source of a person or company's goods or services. In such a case, although you could send a cease and desist letter, it may have no ultimate effect, legally or factually.
8. Assuming your term functions as a trademark and is in actual use in commerce, you can send a cease and desist letter to an infringer regardless of whether-or-not it has a U.S. or state registration or no registration (protected under "common law").
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A: No, you cannot list colloquial variations on a trademark application. If you product is known in the industry by another name, you should register that name as a trademark. Using a trademark in different ways can be damaging to the long term ability to maintain your trademark. It may give a competitor an argument for invalidating your trademark.
You can acquire certain limited common law rights to an unregistered trademark that you are using. If you want to send a cease and desist letter, I recommend speaking with a trademark attorney to determine if you have a legal basis to do so.
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