Same trademark name, same class number, different category, possible?

[iwantmymark]

My jurisdiction is: USA United States

MY UNREGISTERED MARK:
Fictional example of mark is "@@@@".
I have been using it for 15 years.
Regrettably did not file for a trademark earlier.

PROBLEM:
There is now an existing single category mark with the USPTO.
"Class 38", category "Data Transmission"
Incontestable.

Can I still file for my mark in the same geographical area,
"Class 38" category "Service Provider"?
if not this perhaps something else under Class 38.
New application?

I maintain computer systems, they write programs. We do not offer any of the same products and have never conflicted with each other.

So if they registered a mark for their company name @@@@ under class 38 does that block EVERYONE else from registering a mark for the same @@@@ name but under a different category for class 38?

Is it the CLASS NUMBER that is important or the CLASS CATEGORY?
Can 2 exact mark names share the same Class number for different categories?

Has anyone ever seen 2 names share the same class number by choosing different categories.

It's kind of not fair since the business that filed the mark only did so to block me and I never learned about it until it was too late. And they do not even do business in my country, the USA. They only registered the mark here to prevent worldwide competition. That's why they only filed 1 category, just to block me.

So did they block the whole class by filling 1 category or do I still have a chance. Please be honest. I have no legal experience. Anyone?? Thank you.

 

[Michael Wechsler]

It is impossible to say for sure what you can do without looking at specifics. To begin, you have already acquired localized, prior usage rights that they cannot take away from you, especially if your business did business here prior to theirs. With regard to classifications, I'd say that your businesses are much too similar to prevent the likelihood of confusion - wouldn't you say? The classes are structured in order to deal with the likelihood of confusion in an area, and many might not make such fine distinctions. If the other company didn't do business here, there is always the possibility of objection to the validity of the mark in addition to the other business having been well aware of your mark and filing and making a statement to the contrary. I'll look into this more and report back to you since it concerns a client of mine as well.

 

[robo]

Prior use/ecommerce questions: Puffery and Shakedown, or do these guys have a case? - would like any comments and recommendations.

My company is involved with 'X' who asserts prior US use rights for a name we are both using to market a branded product line. Neither company uses the name in question for our domain or company names. My company registered the name as a trademark with the USPTO last year, and X has purportedly been selling the goods online and in catalogs for 5 years, and never registered their trademark with the USPTO. Their brand/product falls under a different CLASS to ours, and we are not disputing their prior use rights in that class. Furthermore, our price points, venues of sale and product applications are very different, and we do not even target the same consumer. To illustrate, consider this example as pretty close to our situation: X sells an inexpensive brand of beard dye and beard conditioners (i.e. marketed to men who style their facial hair) in stores that have a primarily male clientele/convenience store clientele. We sell expensive hair accessories in boutiques to women under the same brand name (which is not a generic word). Our lowest retail price is three to four times X's price, and obviously because our decorative accessories are not dyes or conditioners, the class under which our trademark is filed is quite different to the class under which we would have filed if marketing hair dyes and conditioners. When doing a web search, our brand pops up ahead of theirs. Last year, on a similar search, their brand never registered in any image or web search.

Where it gets interesting is that our product can be filled with a refill that we market under a completely different trademarked name (one which is not in dispute) and when thus filled, our decorative accessory product described above performs a conceptually similar function to X's product. To extend the hair products analogy, consider that we sell a decorative hair accessory to women that dispenses a dye or conditioner while it is being worn (if such a product even exists). The dispensed product has to be in a special container sold by us and is sold under a completely different brand name, so X's product cannot be used for this purpose (as if any woman would use a men's beard dye to dye her hair). This decorative accessory is something only women would buy because presumably very few men would attach a woman's decorative hair accessory to their face.

To me, their case seems to rest on the usual puffery and bluster, but I would like any thoughts or suggestions on similar precedents any of you may know of, or any recommendations on how to approach this case from those who have experience in any similar disputes.