All Questions in Trademark Registration >> Use versus Common Law Trademark versus TM Symbol versus Registration

Use versus Common Law Trademark versus TM Symbol versus Registration

Posted by . updated on 11/11/2009
I am so confused at this point... any advice will be appreciated. I realize I probably should consult with a trademark attorney. I'm trying to get familiar before I make that call.

The situation...

My daughter uses a stage name in her work. She's used that name for years and has a number of printed examples documenting that use. She never registered that name nor did she use a TM symbol.

She now is contracted to a firm and provides a number of services to that firm including design (fashion stuff). My daughter is interested in trademarking the stage name. That firm has started using my daughter's stage name on their documentation and is using a TM symbol. A quick search by me has not found any evidence that the firm has started the registration process. I don't want to ask them because if they haven't applied yet I don't want them to.

I do not know if the contract between my daughter and the firm has any terms regarding trademark use. I'll get a copy of the contract before contacting a lawyer.

I'm recommending my daughter pursue registration before she loses any rights she might have. She, being a pragmatist, wants me to have an idea as to whether she'd be successful before she sinks $'s into the effort.

So... having written all that my question is:

Since my daughter has proof of her use of the stage name years before she contracted with this firm and before the firm started using her stage name with the TM after it, will that make her more or less likely to be able to obtain registration? Or will it maybe make no difference at all?

From what I've read it seems like her on-going use in prior years trumps the firms claim because they've been putting a TM after the name.

I think I've confused myself. Below is a brief timeline:
- Daughter started using a stage name. Did not register. Did not use TM symbol.
- Years later daughter contracted with firm to provide various services under that same stage name.
- Firm started using daughter's stage name and using TM symbol following.
- Firm has evidently not applied for trademark registration.
- Daughter wants to register the stage name as a trademark for herself.

Again, any advice is greatly appreciated.

Thanks.

Troy
Answers (6)
 
JSonnabend
The important aspect of trademark rights in the present situation is that trademarks aren't acquired or owned in the abstract.  TM rights attach to uses of a mark in connection with specific goods or services.

If your daughter used her "stage name" to provide some sort of entertainment services (like "Billy Joel", for instance), then she likely has rights to the name for those services.  What is less clear is how the new use of the name relates to the old use; that is, how, if at all, the new services relate to the entertainment services.

Strict TM analysis aside, at a gut level it sounds as if the new firm is overstepping its bounds.  As a first step it would likely make sense to discuss the issue with the new firm, possibly in association with an attorney, to at least let the new firm know you object to its actions.

- Jeff
 
 
troy
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Thanks. Your post helps clear up quite a bit for me.

My daughter did (does) use her stage name for entertainment services (like "Billy Joel"). The services she is providing for the new firm are nearly identical to what she's done prior. She does the same type of entertainment performances as she did before contracting with this company. She's doing the same type of promoting for this company as she did for herself.

I think the only material difference in what she did on her own and what she does now is maybe in scale. Keeping with the "like Billy Joel" example. When she was on her own it was like when Billy was still early in his career. He might have had a very strong regional presence - like Mid-Atlantic and Northeast - but also have a national awareness but not so strong outside of the initial region. Later in his career he developed a strong national and even international presence. Still the same Billy with the same performances and the same songs but just a larger audience. My daughter's association with this firm is moving her from the very strong regional presence with an ok national presence to a very strong national presence and moving into an international.

Thanks again for your post. It's helped me, I think, understand a bit better some of the concepts and it has me able to now figure out what my next step or two needs to be. And... I have a lot more confidence in taking these next steps.

Troy
 
 
Isaac
Quote from: troy on 09-25-08 at 10:48 am
My daughter uses a stage name in her work. She's used that name for years and has a number of printed examples documenting that use. She never registered that name nor did she use a TM symbol.

Is there any indication on the literature bearing the mark as to who owns the trademark?  It's possible that the firm's actions don't go so far as to claim rights for the firm that belong to your daughter.  I'd also suggest a review of your daughter's agreement for terms that might relate to intellectual property rights.  
 
 
troy
Thanks Isaac.

To my knowledge the current firm's documentation goes something like...

The XYZ Entertainment Group presents Troy's Daughter TM at the So-and-So Forum on October 31.

I don't recall ever seeing anything like an explicit statement that XYZ claims to "own" the trademark.

I'll do some more exhaustive checking on that.

I have requested my daughter get me a copy of her terms. She's out on a tour right now and I don't expect to get that until late next week.

Thanks again!

Troy
 
 
JSonnabend
My advice is still to talk to them about your concerns, preferably after (or in conjunction with) speaking to an attorney.

- Jeff
 
 
h2ogrunt
You're right to check the terms of her contract before getting litigious. If they make no claim of ownership to your daughter's stage name, or better yet, identify her party as both her birth name and stage name at the beginning of the contract (demonstrating they did not create the pseudonym), I'd say you're pretty much in the clear. They may dispute that any creation she comes up with during her contract is their property and they would be somewhat right. But the name itself, doubtful. As far as them using TM on adverts, just remember that TM has no legal weight and is only a claim to the public saying "back off! we're using it". Only the "circled R' has legal weight. They may be using the TM symbol in an attempt to setup a common law argument should they encounter a dispute while trying to register it. But it's a pretty moot point if you can prove your daughter's use of the stage name prior to any of their uses in the same class (e.g. entertainment).

Your daughter could try registering her stage name with the USPTO herself, incurring only the Trademark Processing Fee of $375 (with some other potential costs adding to the bill - see: http://www.uspto.gov/web/offices/ac/qs/ope/fee2008october02.htm#tm) or you could hire a lawyer to setup it all up (that can cost anywhere north of $500, shopping around required). The use of a lawyer is recommended though as intellectual property laws are very complex. If you do this, there is no need to tell XYZ company about it until the registration is complete. If the contract is renegotiated, then she can actually use her intellectual rights to bargain (or not) the use of her stage name as she would own it according to the Federal Registry. If she's a singer, actress or entertainer of some sort there may be a union with which she can register herself under her stage name. This gives you even more of a legal argument. If "merchandizing" her name isn't something you want to do, then you may even forget the trademark altogether and stick with the union's registry... but who wants to foresake merchandizing rights, right?!
 

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