Legal Question in Intellectual Property in Massachusetts
Common Law Trademark
I have a question concerning common law trademark, I have got so many different answers to the question. I started out with a name for my company back in 2001 and I have the 1099's to prove that I have used that name since then, back in 2007 I discovered a web site using the same exact name and providing the same exact services, I informed the web site that the name was already being used by myself and he said he check everywhere and could not find the name being used, he then reserved the name through the Secretary of State and let it lapse, I in turn reserved the name and incorporated, now comes the fun stuff, he in turn files a appeal with the Secretary of State that he had the name first and we have a hearing I bring in all the documents and notorized letters from the businesses which I have worked at and still work at to the hearing and he wins, now I have to appeal to Superior Court.
Now the questions, should I apply for a trademark in my state before the appeal and can I file an trademark infringement suit against the other company, or can someone guide down a road that I should travel.
1 Answer from Attorneys
Re: Common Law Trademark
It is unfortunate that you chose to go this far without legal counsel, as it likely will now cost you far more than it would have done had you engaged trademark counsel for the last proceeding. Among other things, it may be that you are attempting to claim rights in a name that is without trademark significance.
Application for a state trademark will not help your case in MA court. The scope of your rights at common law is dictated by the extent of your actual use -- if in interstate commerce, then federal common law rights arise under the Lanham Act -- in the geographic territory of your use. The fact that you lost the foot-race to obtain the domain name is also unfortunate as it is rather difficult to dislodge someone without a federal trademark registration.
If the other party is using "your" trademark in a place where you have established prior rights by actual use in commerce, then you could indeed commence an action for infringement. If you intend to proceed with the appeal of the Secretary of State's determination, it would be efficient (and probably necessary) to include trademark infringement in the case.
Before taking any further action, however, you should bring the entire file to a trademark lawyer for a specific evaluation of your situation.
Best wishes,
LDWG
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