Legal Question in Intellectual Property in New Jersey

There are differences between trademarks and tradenames and the intellectual property rights in both are fairly complex. Determining your rights would require a search of the marks that they claim to determine what the mark covers. Don't be too quick to buckle on this. There are many instances where companies will demand more rights that they have in the hope that they don't have to pay you for the name. � See also: http://info.corbettlaw.net/lawguru.htm

I did a brief search in the US Trademark Office database and found the following:

There are three marks that have been filed by a Scottsdale Arizona corporation named Runway Beauty Inc, an Arizona corporation ("RBI"). These three are:

Runway TV, Runway Beauty and Runway Magazine.

The latter two have been officially registered; Runway TV is still just an application and is still being processed by the Trademark Office. Runway TV was just filed last October, on the basis of an "intent to use" (although they did, paradoxically, claim dates of prior usage) claiming coverage for "Broadcasting of TV programs".

A mere application that has not matured into a true "registration" does not itself give any rights to the owner. Any such rights must wait until the application blossoms (if at all) into a registration.

Runway Beauty was registered for the services of "magazine publishing" claiming Priority Dates based on prior usage in 2006, with an actual filing date of August 2007.

Runway Magazine was registered for a "general feature magazine" -- they claim a "First Use" in the year of 2002 and a "First Use in Interstate Commerce" of 2007 for this mark. The application was itself filed in July 2008, but they claim priorities based on the above and earlier dates.

The essential question is the earliest Priority Date that is claimed by the Arizona company, RBI. The above-noted references disclose that the earliest Priority Date claimed is 2002 (and that is not a date claimed for Interstate Commerce).

Whatever the scope of RBI's prior usage, your actual use in commerce precedes this, so you have a senior Priority Date, with respect to your usage in your geographic market.

Your senior rights in and with respect to your geographic market vested before RBI gained any rights, and you cannot be divested of those rights in your area. Furthermore, you are, within your market, senior to RBI. That is, *IF* there is a trademark conflict at all (and that is an open question -- there must be a "likelihood of confusion" before there is even a conflict!!), *THEN* you would have seniority within your geographic market and could lodge a claim against RBI, to stay out of your geographic market.

Your geographic market is determined by your advertising reach, the location of your customers, the extent of your sales and services geographically, and other factors.

Unless you have dramatically expanded your geographic market in the last few years -- i.e. since their earliest filing date in 2007 --- it is unlikely that you have even entered their "territory" which they have gained through their trademark filings.

I would suggest you have crafted a response from an attorney familiar with trademark rights and the "common law" doctrines of prior usage. This should cool RBI's ardor in trying to come after you. The trademarks filed were filed by RBI itself, without an attorney, and it seems quite likely that they are at all aware of the restrictions and limits of a trademark filing. They may have a grossly expanded notion of what their rights are.

Based on your services, you may also be able to deny, with good cause, whether there is even a "likelihood of confusion" at all. This is another, and distinct, reason for a finding of non-conflict between you and RBI.

If you wish to contact me by email regarding this, please do so and I can prepare a letter to respond to the trademark claimant, at a very reasonable fee. It's important that the letter precisely set out the limits of their trademark rights, so that they will know that you understand what you are talking about ... it seems unlikely that they understand the law here.