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Law Educator, Esq.
Law Educator, Esq., Lawyer
Category: Intellectual Property Law
Satisfied Customers: 113507
Experience:  Attorney practicing all aspects of copyright/trademark law
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I had a name trademarked and it was in commerce but I did

Customer Question

I had a name trademarked and it was in commerce but I did not file the necessary documents to show continued use between 5th and 6th years and the trademark stands cancelled for this name. Can a different entity apply to get this name trademarked?
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  Law Educator, Esq. replied 1 year ago.
Thank you for your question. I look forward to working with you to provide you the information you are seeking for educational purposes only.
When a trademark is cancelled for non-renewal, then any other person or entity can apply to the USPTO and seek to obtain that trademark. A cancelled mark, even if it was previously used in commerce, is available for anyone to take and use without regard to the previous owner's use and they can register the mark in their name and get the rights to the mark.
Customer: replied 1 year ago.
My understanding is a trademark is for 10 yrs. I applied for the mark in 2008 and I was supposed to file documents for continued use between 2013 and 2014. Since I did not file this document the name mark was cancelled May 2015. You mean to say that any entity is eligible to apply to get this name trademarked and can they use this for the same purpose that we were in commerce for?
Expert:  Law Educator, Esq. replied 1 year ago.
Thank you for your reply.
Yes, but once the registration was cancelled, it is open for anyone else to use. You would have to reapply to reinstate your trademark to preserve it. If you do not reapply, then anyone can apply for the mark, since it is cancelled and cancelled means no longer valid. So you have to apply to get it reinstated if you want to protect your registered rights to the mark.
Customer: replied 1 year ago.
Will a international trademark be acknowledged in US courts and in other country courts?
Expert:  Law Educator, Esq. replied 1 year ago.
Thank you for your reply.
Yes an international trademark is enforceable in the US and other countries where they are party to the international treaty on trademarks.
Customer: replied 1 year ago.
There is a website www.XYA.com that has been in commerce for 10 yrs since 2006 and they haven't applied any trademark to operate this website for all these years. They are operating this website in certain industry, now suddenly some other company pops up in 2016 and tries to get a similar domain name with a different extension (like xya.co/xya.uk) and applies a trademark for this name. What will happen to the 1st gut if the trademark is with the 2nd guy? Does the 1st guy have to cease its operations after all these 10 yrs of operating this website?
Expert:  Law Educator, Esq. replied 1 year ago.
Thank you for your reply.
The first company using the mark in commerce continuously, even if they do not have a registration, can assert a common law trademark, which gives them limited rights. The limited rights is that if they can prove continued use in commerce they can seek to stop anyone else from infringing on their mark, but they cannot seek the damages they could seek if the mark is registered. If the second person tries to apply for a mark, then the first can file an objection or to cancel the mark based on the first having continuously used the mark in commerce as a common law trademark.
So no, the first guy has a common law trademark still and can seek to stop them from using the mark upon proof the first still uses it in commerce. The first party just cannot seek the statutory damages only a right to stop them from using the mark.

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