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Thomas Swartz
Thomas Swartz, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 3100
Experience:  Twenty one years experience as a lawyer in New York and New Jersey. Former Appellate Law Clerk.
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Since 1995 we have been using a product name "Xtraclean" on

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Since 1995 we have been using a product name "Xtraclean" on many of our products. We have just found out that another individual filed for a copyright on that name in December 2012. Doesn't our prior use of the name prevent him from applying for that copyright? Do we have any protection at all?
Hello JACUSTOMER,

I did a quick trademark search (I think you meant trademark and not copyright) and I notice that there are two live trademark registrations for "Xtraclean." One in the category of household and industrial cleaning products (I assume this is yours), and one in the category of face masks, surgical supplies etc. (and this was the one filed in December 2012).

Trademarks work by the categories of goods or services represented by the trademark. Two people or entities can have the same trademark so long as they are not used in the same category of goods so that there is no consumer confusion.

So, since cleaning products and masks//surgical supplies are such different categories of goods, it would be legitimate for these two to use the same trademark.

Your trademark does protect you if anyone tried to use "Xtraclean" to promote their line of cleaning products.

I hope this answers your question.

Thomas
Customer: replied 3 years ago.


Yes, I meant trademark and not copyright. My company, American Cleanstat, doesn't have any filings for trademark on Xtraclean, even though we have been using the name for nearly 15 years (the trademark holder for the cleaning products is unassociated with my company). A 3rd party had filed the application for Xtraclean in December 2012 and I am concerned that the 3rd party will hold us hostage for the trademark.


 


Can you please reply to this concern?


 


Thank you.

In trademark law, it is indeed the first person to use a trademark in commerce, and not the first person to register a trademark, that creates rights and priority over others. So even though you did not register your mark first, since you were the first to use it, the other company would not have a legitimate trademark infringement claim against you.

In addition, as mentioned above if you are in different categories of goods their could be no infringement.

But it would be a good idea to register your trademark as it does confer certain benefits (such as being as to sue in federal court, use of the ® symbol).

Thomas
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