Legal Question in Intellectual Property in Ohio

Trademark Question

I was never able to get a registered trademark on my company's name because another company in a different state with a similar name had a registered trademark on their name. That company sent me a license to use my name, free of charge, for five years. Then, in July of 2001, they abandoned their registered trademark. I have no idea if the license is still valid, and their lawyer (with whom I have spoken) has not talked to the company since he drafted the license. In September, I found out that yet another company had changed its legal name to another name similar to my own, and had filed for a registered trademark on that name. I filed my own competing application for a registered trademark on my name just recently.

In a court of law, would I have the advantage over this company (the one that just changed its legal name) because I incorporated first, or would they have the advantage because they applied for the trademark first? Also, is my original license null and void?


Asked on 1/10/02, 8:48 pm

1 Answer from Attorneys
Geoffrey G. Gussis, Esq. Riker, Danzig LLP

Re: Trademark Question

The use of a trademark usually inures to the benefit of the trademark owner (licensor) not the licensee. You should first make sure that the original trademark owner has truly abandoned the rights to the mark. Trademark rights arise through use (unless you file a 1b Intent to Use app) so you would have to argue that you have used the mark prior to their use. Your position as licensee muddies the water. Your best bet is to contact the old company toi see if they have abandoned the old mark, arrange for an assignment at a nominal fee, then change the name on the registration to yourself. Then you can probably squash everyone else, including the new person. This is for information purposes only and is not legal advice.

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Answered on 1/10/02, 9:30 pm


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