Asked in Trademark for California

Q: Can I register a trademark for a name that I used first, but another company is using it?

Years ago, I have published a product design on Github under a distinctive name and I planned to manufacture it, but now someone else has launched a similar product for the same purpose with exactly the same name. My design is recognized with 500 likes, but I never sold it as a product. The other company is already selling it. Can I file a trademark since I have a proof that I was first using the name (the date on Github) and then force the other company to rename the product? It would be unfair if I have to rename it on many places and it will still appear in some articles that I cannot edit.

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1 Lawyer Answer
Fritz-Howard Raymond Clapp
Fritz-Howard Raymond Clapp
  • Trademarks Lawyer
  • Beverly Hills, CA
  • Licensed in California

A: Federal registration of a trademark is based on its "use in commerce" which generally means sales (or at least advertising for sale). Whether the nature of your prior use qualifies is problematic.

You should consult a qualified trademark attorney to review the matter and advise whether you may have sufficient grounds for making a demand on the other company to cease its use, or perhaps negotiate a compromise of some sort.

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