Mansfield, TX asked in Business Law, Copyright and Trademark for Texas

Q: I came up with a slogan for my dads company, unaware another company was using it first w/o TM, can we legally TM it?

I asked this question about 5 days ago, but got no answer. I came up with a slogan for my dads company, and even bought the web domain for it, but later found out another organization had been using it first, by sheer coincidence. They don't have it trademarked from what I can tell, so can I legally trademark it for our company to protect all of the marketing we have used it in for the last year and a half? Or since they were using it first, would that make it impossible to trademark now? Again, we do own the web domain for the actual slogan. (This is in Texas by the way)

1 Lawyer Answer
Tania Maria Williams
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Answered
  • Trademarks Lawyer
  • West Palm Beach, FL

A: Trademark rights are based on use and a person does not have to register their mark with the USPTO to have common law rights in the mark. Because of that, the other organization's use may be paramount to yours in the jurisdiction where they have been using it even though you won the domain name. Filing the trademark application also won't necessarily protect you from a cancellation request by the company at some later date. There may be options available such as obtaining a co-existence agreement between your father's company and the other organization and then doing a federal registration but you would definitely need the guidance of an attorney to assist you with that. Also, please keep in mind that rebranding may actually be the most cost-efficient option even though it may not be the most preferred.

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