Legal Question in Business Law in California

As a Franchise Attorney I can say the following. In the absence of a federal registration, both corps have been establishing what are called common law trademark rights in their respective trading areas. They won't and don't have to stop. You can try to get a federal registration, which is always a good idea if you do business in interstate commerce. Even if you get that, they will still have pre-existing trademark rights in their trading areas as of the date of your registration. Consult with a good trademark or franchise attorney in your area for specific advice.

Mr. Franchise - Kevin B. Murphy, B.S., M.B.A., J.D.

Franchise Foundations, a Professional Corporation

We must be careful to differentiate between corporate names and trademarks, although corporate names can become trademarks, and vice versa.

No two California corporations may have the same name in California, as enforced by the Secretary of State. Other states may allow a California corporation's name as a corporate name in their states, if this name has not already been registered there.

A trademark is a distinctive mark used by a person to identify his or her or its products or services and to distinguish such products or services from those of other persons. A trademark does not have to be registered, unless you want it to become inconstestable, to publicize it, determine whether there are contestants for the mark out there, or to enforce the mark in federal court. If you are using your corporate name as a mark in the above described sense, then you must determine whether your products or services can be confused with the products and services of others. That is your first issue.

Since "first in use is first in right", as explained above, your next issue is to determine whether you or the other person first commenced use of the mark in interestate commerce. If your use of the mark was first (assuming the marks are the same or confusingly similar, which can be another issue), and your products or services can be confused with the other's products or services by use of the mark, then you have the right to register the mark, and thereby obtain the right to enforce it in the federal courts, or challenge the other person's attempts to register the mark.

Another topic not mentioned in the preceding answers is that trademark registrations are product- or service-specific. Take the imaginary name "Purple Passion" for example. X can trademark it for lipstick, Y can trademark it for housepaint, and Z can trademark it for wine, and there is no conflict.