Trademark rights?

Posted by . updated on 11/11/2009
Scenerio- Company 1. starts using a trademark in Ohio and does business in three surrounding states, then registers the mark.   Company 2. starts business a year later using the same mark in FL and GA but gets refused registration on the basis of company 1.'s mark.

My question, is company 1. given a certain amount of time to expand business into the states of FL and GA and do they obtain rights to the mark in those states because of registration or, does company 2. have the rights to use the mark in those states because they were the first to do business there.

It seems a company with registration should have an opportunity to expand their business but the trademark law seems strange sometimes.
Answers (6)
 
JSonnabend
Under that scenario, the company with the registration could essentially enjoin junior users' use once the registrant was ready to expand into a junior user's geographic market.  

Where a "junior" party was first to use but later to register (or didn't register), that party is actually the "senior" party in its geographic market, but it is "frozen" there; that is, it can't expand into the registrant's geographic market.

- Jeff
 
 
bigdaddy
What exactly does enjoin mean?
 
 
TataBoxInhibitor
Quote
Under that scenario, the company with the registration could essentially enjoin junior users' use once the registrant was ready to expand into a junior user's geographic market. ?

Where a "junior" party was first to use but later to register (or didn't register), that party is actually the "senior" party in its geographic market, but it is "frozen" there; that is, it can't expand into the registrant's geographic market.

- Jeff



In that scenario, the registrant is then entitled to what they call "swiss cheese" protection, the US of A being the bread I suppose.
 
 
JSonnabend
Quote
In that scenario, the registrant is then entitled to what they call "swiss cheese" protection, the US of A being the bread I suppose.

If by "swiss cheese" protection you mean with areas carved out, that's not right as I understand the fact pattern.  If Company 1 registers the mark before Company 2 starts using it, Company 1 can enjoin (i.e., stop) Company 2's use once Company 1 is ready to move into Company 2's geographic market.

- Jeff
 
 
TataBoxInhibitor
Quote
If by "swiss cheese" protection you mean with areas carved out, that's not right as I understand the fact pattern. ?If Company 1 registers the mark before Company 2 starts using it, Company 1 can enjoin (i.e., stop) Company 2's use once Company 1 is ready to move into Company 2's geographic market.

- Jeff


Correct.  I thought your earlier statement regarding junior party was the first to use, but not register, is actually the senior party in its geographic location, thus being the hole in another registrants protection.  Correct or not corrrect with regards to what others call "swiss cheese?"
 
 
JSonnabend
Quote
Correct.  I thought your earlier statement regarding junior party was the first to use, but not register, is actually the senior party in its geographic location, thus being the hole in another registrants protection.  Correct or not corrrect with regards to what others call "swiss cheese?"

I've never heard the "swiss cheese" nomenclature, but you are correct that a senior user who predates registration can keep a subsequent registrant out of the senior party's geographic area, creating a "hole" in the registrant's geographic reach.  I suppose with enough such "holes", the a map of the geographic coverage of the registrant's rights might begin to look like swiss cheese.  It wouldn't taste as good, though.

- Jeff
 

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