All Questions in Trademark Ownership >> Use of a creative series vs a single creative work - Who has trademark rights?

Use of a creative series vs a single creative work - Who has trademark rights?

Posted by . updated on 11/11/2009
Okay...  I'm trying to determine which of the following two companies has superior trademark rights for two very similar products with very similar names.

Company A began selling a single creative work in 2005, but did not attempt to register a trademark.

In 2006, Company B began selling a very similar series of creative works with a source identifier that would probably be deemed confusingly similar to the title of Company A's single work.  Company B also did not attempt to register trademark.

In 2007, Company A applies for trademark registration for their single creative work.  Ultimately, this registration is refused - because the proposed mark is used only as the title of their single creative work.  In the outgoing office action the USTPO gives the applicant two options:  1) Submit evidence that the proposed mark has actually been used to identify a series of creative works, or 2) amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use) with the following signed declaration:

?Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.?

Given that their proposed mark has only been used in commerce to identify a single creative work, unless Company A chooses to abandon their application, their only option seems to be to change the application filing basis from 1(a) (use in commerce) to 1(b) (intent to use).

However, since this intent to use application would be dated in 2007, and since Company B used a very similar source identifier in their series of similar creative works that they first put into commerce in 2006, which company is likely to have rights to use the mark in question?

My belief is that since Company B's use of the mark in a series predates Company A's use of the mark in a series (Company A hasn't actually used it in a series yet), Company B has trademark rights.  However, the fact that Company A actually used their mark to identify their single creative work before Company B started selling their series, and the fact that Company B's source identifier is very similar to the title of Company A's single creative work muddies things up a bit for me.

Typically, I would just look at who used the mark in question first to determine who has trademark rights.  However, because in this case Company A used the mark first for a product that cannot be trademarked, I'm confused.

Any insights or ideas into which company is likely to have trademark rights would be greatly appreciated.

Answers (3)
Andrew -

That's quite a fact pattern (sounds almost like a law school exam question). My take on it is this, without doing any research. 

I would think that Party B has a good argument that it has TM rights in the series title, and thus could prevent Party A from bringing out a series under a confusingly similar title.

Party A, on the other hand, likely has a good argument that it can continue selling its single work under the title (a) because the title is not acting as a trademark, and (b) because it was first in time using the title.

I imagine Party A might also have some argument around the notion that Party B's rights are narrow or non-existent because Party A's senior, single-title use somehow denies Party B any distinctiveness.  I'm having trouble articulating the argument in any detail, but it's worth some thought at least, I believe.

Regarding the application(s), if Party B hasn't filed, then the PTO will not refuse Party A's application based on Party B's use.  Party B would have to oppose the application in order to be heard.

- Jeff
Thanks for your very fast, and very helpful reply!  Of course, the information you gave now leads to a follow-up question:

Currently both parties have, at best, a common law trademark - with Party A possibly not having even that.  (To know for sure, I'd need to research the TM laws in Party A's state in regards to creative works.)  Given that Party A used the title first in their single work, it seems unlikely that Party B could force them to stop using it.  And, given that Party B first used the mark in a series, it also seems unlikely that Party A could force them to stop using it either.

That being said, is it reasonable to assume that neither party would have a good argument in court, if they were to pursue legal action on the grounds of infringement?

And what about a possible claim of cybersquatting?  I highly doubt Party B would have an argument, since Party A registered their domain (same as the title of their creative work) first.  However, do you think Party A would have a decent argument against Party B, since Party B registered a similar domain name after Party A had their domain in place?  Or, would a claim of of cybersquatting be moot given that Party A likely doesn't have a trademark to begin with?

Thanks again for your fast, and helpful response.  While not a law school question, I agree that it certainly could be one given the many nuances in the timeline and facts.   Smiley
Just to clarify what I'm really asking in the above post:

Let's say that I'm Party B in the above scenario.  Do I have anything to worry about in terms of being sued (I'm not quite sure for what, but trademark infringement comes to mind first) if I keep selling my series?  Also, since both the source identifier of my product and the domain name associated with it would probably be deemed confusingly similar to the title of Party A's single creative work and the domain associated with it, should I be concerned about a potential cybersquatting complaint from Party A?  (They registered their domain first.)

Or, is it likely that both Party A and Party B are essentially at a stalemate where neither party is likely to have strong enough rights to prevent the other party from continuing to sell their respective goods under their existing names?

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