Legal Question in Intellectual Property in Illinois

Dear Chris:

Before you take any action, try to make sure that this other entity is the newcomer on the block, and not you. (Trust me, it happens.)

Assuming you are the first user, the proper area of law for this is trademarks. You, or your attorney, should do a search on the USPTO (United States Patent and Trademark) website to make sure there is not already a trademark registration for these, or closely similar, words or phrases. If not, you can file to register your slogan/logo as a Federal trademarks.

Registration takes about a year (I know, it's slow) and costs should be in the area of $1000-$1500, inclusive of attorney's fees and government filing fees. That's assuming no problem(s) with your application.

Federal registration gives you exclusive rights in and to the trademark, and prevents others from using the same or any "confusingly similar" mark for similar goods or services.

Sylvia Mulholland

Well that was some bad advice from the California lawyer! What she advises is not even right for California, except for a national business based in California. You are in Illinois and need a quicker and cheaper solution. She neglected to mention that Illinois, like all states, has a state trademark/service mark registration.That is your best short term option here, and the clear option of choice. Better yet, Illinois state trademark registrations only cost $10 (cheapest in the country) and are available in about 2-3 weeks. They are also among the fastest in the country. Since the other bbq is also in Illinois, this is what you want to do first, so you can immediately write the other bbq and "invite" them to change names or be sued and forced to stop. You would be suing in Illinois, so an Illinois registration will work fine for you here. I am an Illinois trademark specialist attorney and do Illinois registrations for $110 and federal service mark registrations for $475 (both include government fees) for non-profits like yours and cease and desist letters for about $100. You don't need to send thousands of dollars to California for inflated cost legal services that you probably do not need.

Another thought. Since you are working with the Jaycees on this, and I know from being a former state officer in the Jaycees that it would be likely you have a Jaycee worker who would enjoy learning how to register a state trademark like yours and how to search trademarks, give me a call and I will tell you how you can do this yourselves with a little work. No cost to a Jaycee. That will cut your cost down to the $10 Illinois state service mark registration fee and substitute your work for the legal fees. Eventually you will probably want a Federal registration, and I will do the same on that -- show you how to do it yourself for just the Government filing fee of $275. The cease and desist letter should come from a lawyer. You probably have a lawyer in either the Lions or Jaycees that can take care of that.

Trademark rights in the United States are based on first use. If you first used RED, WHITE & BBQ in 2007 for a barbecue competition and festival and the new festival first started using RED, WHITE & BBQ in 2010, your trademark rights would be senior to that of the more recent user and if there was a likelihood of confusion arising between you and the new user you could demand that the new user cease and desist from using its mark. A likelihood of confusion could arise if you and the new user used your respective marks in connection with the same or similar type of event and you promoted your event in media, e.g., newspapers, handouts, radio promos, etc., that would cover the same geographical area as the new festival.

As the first user of RED WHITE & BBQ, you don't have to worry about your festival being shut down by the new user.

If you advertise your festival on the Internet you can apply to register your RED WHITE & BBQ trademark with the U.S. Patent & Trademark Office. The Patent Office filing fee, exclusive of any fees that a lawyer would charge you, is $275.00. The advantage of obtaining a trademark registration on the Principal Register of the U.S. Patent & Trademark Office is that it is prima facie evidence of your ownership of and exclusive right to use your trademark. It will also place subsequent applicants and others on notice that the name of your festival is claimed as your trademark and bar later applicants from registering confusingly similar marks with the U.S. Patent and Trademark Office.

The other attorneys are right on point. I would recommend you do both - trademark registration with Illinois (quick and cheap) and a federal registration with the USPTO (stronger rights and they apply in all states). Consult with a trademark attorney in your area for specifics.

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

Franchise Attorney