Q: In 2010 I coined the name ColdArted. I recently discovered someone in Illinois trademarked the same name. What can I do?
In 2010 I coined the name ColdArted (Cold-Arted Creations, ColdArted.webs.com). I started signing my artwork in 2010 with that name. In 2011 I established a Google account with the same name. In 2014 cold-arted creations became a limited liability corporation. That was in the state of Indiana. Yesterday just for fun I googled the name and found a company That trademarked the name in 2016. Is there anything that can be done About this?
A: There is potentially something you can do. First of all, are you sure that the company you found on google has officially received trademark registration? If not, it would be worth having an attorney conduct a thorough USPTO trademark search for you to see if they have or if they have applied to do so.
If they have received national registration of their mark, your options are more limited. This is because the USPTO operates on a "first to file" basis where the first one to register a mark obtains "priority." However, there is a chance you have already obtained what is known as a "common-law trademark" in Indiana. A common-law trademark provides protection as a matter of law, not as a matter of registration. If you have used the mark enough (meaning, for long enough and publicly enough) that people in your geographic area of business operation have come to recognize your mark as synonymous with your goods or services, you may have common-law trademark protections.
If you do, it would mean that you would have priority over the business that obtained USPTO registration, but only in the area you have already operated (this can even be limited to only a portion of the state where you most commonly operate).
If they have not yet obtained or filed for federal registration, I would suggest you get on that quickly to see if you can beat them there! There's also a fairly in-depth analysis that can be done to determine whether, despite the similarity of the two business names, your mark can be registered because of the line of work that you are in. An attorney can help you answer that question, as well.
I hope this helps and I wish you the best of luck! By the way, I think the name is pretty clever.
DISCLAIMER: This answer does not constitute legal advice and it should not be relied-upon as such. An attorney-client relationship has not been formed between the individual asking the question and John B. Riordan or Fidelity Law Group. This communicate is public and is therefore not confidential in any way.
A: Coining a name is not the same as using a name as a trademark ( as a source-identifier for your goods or services). Work with a trademark attorney to determine if you may be able to use or register the name, ie. if your class/category is distinct from the class for which this other trademark has been registered, etc.
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