All Questions in Trademark Ownership >> who's the legal rights? First use or registered?

who's the legal rights? First use or registered?

Posted by . updated on 11/11/2009
Hello,


I work with a small health organization. There is a giant   health organization in Chicago has  a big party called "XXXXXXX".

My organization does not agree with them. We have  a program called "XXXXXXX" Same trademark. We fight against them.

Three years ago, we filed  the trademark "XXXXXXX" with the state of Illinois. We are the owner of the trademark "XXXXXXX" in Illinois.

We filed a few weeks ago the same trademark  with US Trademark.

Because they used before the trademark "XXXXXXXX", they can ask us to stop to use the same trademark (even we are the legal owners in the State and Federal.

or

Can we go to court and ask them to stop use our trademark? They are everything we do not believe. Against our values and mission.


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Answers (3)
 
Lyza
It is difficult to understand what you are asking because of your limited command of English, but I will try to assist.  Know, however, that I am not an attorney.

If your small organization ("Company A") is attempting to fight a large, well-funded organization ("Company B"), you should hire an attorney familiar with Trademark law to help you.  Without an attorney's assistance, you might give up rights to which you are actually entitled or strike a more limited co-existence agreement than would be needed.  The attorney will be able to look at your actual situation and advise you as to how best to proceed cost effectively based on the rights you have in your mark, whether there would be confusion in the marketplace by concurrent use of both marks, and if your mark has superior rights to those of the mark owned by Company B.

There are several attorneys who regularly respond to questions on this list so you may get additional help.  Thanks.

Lyza
 
 
SteveMueller
We have the legal rights  (State and Federal Trademark), but the big Organization uses this trademark for many years, before us.

We cannot understand why we have Trademark Service if, according to the Common Law, if you are the first use the tardemark.

We are going to hire a lawyer.

Thanks
 
 
Isaac
Quote
Dear member,


We have the legal rights ?(State and Federal Trademark), but the big Organization uses this trademark for many years, before us.


Your may have legal rights.   You have state and federal registrations which are useful for protecting your trademark but which do not of themselves establish trademark rights.  Legal rights come from legitimate uses of a mark in commerce and not from registration.

 

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