Trademark Infringement Claim After The Fact?

[LinxUs]

So I was thinking of trademarking a particular name. It is currently not registered in the U.S. Patent & Trademark Office. I am seriously thinking about trademarking it to go into business with it. However, I found out that a few people are using that name (on social networking sites). So I am wondering if I trademark it, although I've had the idea for a while, would I have a valid claim against someone holding that name?

 

[Michael Wechsler]

You might have a problem using that name. If you used it as a brand of shoe laces it is possible you could obtain a trademark. If the name is generic you will have additional challenges, e.g. Billy John, but a much better chance if it's Jilly Bohn since that is rather unique and fanciful. If the name is to be used, regardless of which one, for social networking products, you might get approval but may run into a problem when others object of its existing use. Read the trademark application as to what you have to assert when you register and you'll see to what I refer.

 

[LinxUs]

It would be unique. Now if I don't have a registered trademark (or filed yet) but may plan on doing so, do I have a legal right to go after these unique usernames if I believe they are being squatted? For example, the unique username is sitting there, and no one has logged in for 7 months. The social networking site won't consider releasing it (despite its obviously being squatted) unless someone brings a trademark claim against it.

 

[Michael Wechsler]

1) Someone using a user name before you applied for your trademark will probably be immune as their usage predates yours. If your name has been used before in a certain area for commerce, they will likely have protection. Additionally, if they aren't using the name in commerce and there is no likelihood of confusion, you again run into an issue - see the next point.

2) You don't just get a right to use a name exclusively in every category or 'class.' Acme Hardware Stores can be owned by one mark holder while Acme Mexican Restaurants can be held by another. You will apply for a class of trademark usage.

 

[LinxUs]

Thanks again for the response. Aside from litigation, can I in good faith make a trademark infringement complaint (non-litigation) to a website if I state that I am claiming to file for a trademark. Are there laws or problems if I make a claim of trademark infringement without having the trademark registered yet? Is it still "good faith" if I believe I used it years ago?

 

[Michael Wechsler]

You can put in an application for "intent to use." You can't claim infringement if you haven't used the trademark since there is no trade mark to be infringed. And I highly doubt you'll be able to remove people who have used the mark before you for various purposes unless they begin competing with you after your mark has been awarded in its class.