I own a .com domain name and would like to secure the trademark. I searched the uspto site and there was no problem. However, when I searched the internet, there is a business (a gym) in Arizona by that name - but they do not have a website - although they are listed in many directories with their phone number - and mistakenly directing people to our website.My website is a directory of health , fitness - related items.Do you think there would be any issue getting the trademark?
HelloCustomerNo not really. Trademark registration of a mark generally trumps or takes priority over a prior unregistered use of the same trademark. And the first to register a mark creates a presumption of validity to the first to register. In addition, the burden of proving prior use of a mark begins with the unregistered user. So, if this gym were to anyway challenge your registration or subsequently claim trademark infringement, it would have to prove that it began using the mark before you. And if it could prove first use, since you were the first to register the mark, the court would allow the gym to continue to use the mark but only limited to a geographical region. So since the gym is located in Arizona, it would allow the gym to continue to use the mark in Arizona, but you would be free to use it everywhere else.Thomas
Twenty one years experience as a lawyer in New York and New Jersey. Former Appellate Law Clerk.
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