Q: I registered trademark but someone who used to use the mark years ago without registration is trying to use it now.
I have a band name I have used since 2016. I registered for trademark with USPTO in 2020 and it was officially registered in 2021. I have now learned there was a band which used the name briefly in a different market a few years before my first use and every once in a while after that time.
They never registered it with the USPTO and don't seem to have regularly used the name between releases. I have just been made aware they are going to release something under the name in 2022 which poses a problem as my band is going to release an album in 2022 as well.
Since I hold a registration for the mark (and am the first person to register it as a band name for use in musical recordings/performances), am I legally able to send them a C&D and, were it to go to litigation later, would I have legal standing or would I lose my mark since they had used the name previously?
A: It's a little counter-intuitive. In the United States, it is actual use of a designation as a mark that creates rights and priority over others, not the registration. Therefore, typically ownership of a mark goes to the first-to-use, not the first-to-file.
There is no requirement to file and obtain a Trademark right with the US PTO. A trademark can be acquired by use. This is called a "common law" trademark and is generally protected only by State Courts.
The term "common law" indicates that the trademark rights that are developed through use are not governed by statute. Common law trademark rights were developed under a judicially created scheme of rights governed by state law. Common law rights may be afforded to any word, phrase, image, etc. that a business uses in commerce to identify itself, its goods, or its services. Such rights are granted automatically upon use and extended to whoever can prove the first actual use of the mark in a given geographical area (e.g., within a specific state or region).
Federal registration is created by federal statute and is not required to establish common law rights in a mark, nor is it required to begin use of a mark. However, federal registration, if available, is almost always recommended and gives a trademark owner substantial additional rights not available under common law.
You may have superior rights to the name if the band that previously used the name may be said to have abandoned it. This would be a fact-specific inquiry. An attorney would need further information in order to provide you with a definitive answer. Obviously, since you registered your mark with the United States Patent and Trademark Office you placed potential competitors on notice that your mark is federally protected. This is significant in a waiver argument. Once registered, you are allowed to designate your mark with a registered trademark symbol (®) to indicate that the mark is, in fact, a registered trademark. This puts potential competitors on notice that should they infringe upon your mark. You have the right to file a federal trademark infringement action and to obtain remedies as a result of their infringement. Those remedies may include the infringer’s profits as well as other damages, and, in some cases, even tripled damages and attorney fees. These enhanced remedies are usually not available for unregistered, common law trademarks. I do not know if you used the trademark in connection with the release of any music; but, if so, you may be able to prevail.
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