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Hi -
Let's say I do a "name reservation" (for an LLC) with my state 'secretary of state' on Jan 1, 2000. I DON'T start the LLC/ corporation yet and I DON'T do any official service mark with the name; no use in commerce. The only thing done was the "name reservation" in my state (TN).
On Jan 2, 2000, someone else files the same name with the USPTO - either an 'intent to use' or 'in-use' for a service mark. Exact same name for the exact same classification/ purpose, etc.
On Jan 3, 2000, I apply for a service mark with the USPTO (pay my filing fee, etc) for the name I reserved the day before the other person filed with the USPTO.
When the USPTO looks at both applications for the "exact same name" for the service mark we both applied for, for the same classification(s), WHO GETS THE SERVICE MARK (assuming it is not in use already, etc...) ????? And, no offense, are you sure of your answer? Thank you!!
Submitted: 154 days and 5 hours ago.
Category: Intellectual Property Law
Value: $20
Status: CLOSED
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Tennessee
Already Tried:
when I said "name reservation" with the sec of my state......... technically, it was an "application for reservation of LLC name" ........filed with the Dept of State, corporate filings
Posted by
N Cal Attorney
154 days and 4 hours ago.
Answer
You have priority right to the name in Tennessee as the name of an LLC/corporation but whoever registered first with USPTO has priority to trademark the name or rigister it as a service mark.
I'm pretty sure of this answer, since it seems like a clear question.
Edited by N Cal Attorney on 6/7/2009 at 10:21 AM
154 days and 4 hours ago.
Reply
Thanks. But I don't think your answer is correct, which is why I want to ad this:
The USPTO clearly states, as I spoke with one of their attorneys in person previously, that whomever can show that they were using the name first is the owner of that name/ service mark and is entitled to the trademark. In fact, they state you don't have to register the name as a trademark ever. For example, if coca-cola never trade-marked their name, and I came along today and filed a trademark application for the name 'coca-cola', the USPTO can not give me a trademark for coca-coal, since coca-cola can show they have been using the name previously. And if they gave me a trademark, not aware that there was a company named coca-cola, coca-cola would be able to have them repeal the trademark from me, even though the USPTO states that they do not like doing that, though they will, and have. So my question is whether or not reserving the name is equal to me using the name in commerce. Using the name in commerce, such as showing that I had business cards or flyers made up, and being able to prove this, the USPTO states that if the date of those flyers are earlier than the date the person filed an intent to use (assuming the application is the first date of use in any way), that I will be granted the trademark. So, I'm wondering if the date of creating a name reservation filed with the secretary of state, is equal to using the name in commerce? No offense, but if you are not sure, as I get the feeling is the case, no offense, could you open this question to other I.P.A's? I would appreciate it very much as getting the correct answer is vital here. Thank you very much!
Anthony.
Accepted Answer
I am still confident in my answer. I know
USPTO clearly states, as I spoke with one of their attorneys in person previously, that whomever can show that they were
using the name
Your question stated you reserved the name and not that you ever used it.
You asked if the date of creating a name reservation filed with the secretary of state, is equal to using the name in commerce. My answer is NO.
I'm sorry you do not like this answer, but that is my answer.
Edited by N Cal Attorney on 6/7/2009 at 8:25 PM
Expert:
N Cal Attorney
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Answered:
6/7/2009
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