Another Common Law Trademark Question, Please Help

[ImMike]

What is the name of your state?What is the name of your state?I'm in California.

In late 2002, a California individual registers www.houseclothing.com (name changed, not the actual name/site) and begins selling men's t-shirts -- bearing their House logo -- on their Website. To this day, the site only sells men's t-shirts, and to be honest, the individual doesn't look like he has been very successful in his venture (they have sold around 30 shirts to date). From their Website, it looks like they plan on selling women's t-shirts one day, but have not yet done so. The individual has not registered a federal trademark for "House" or "House Clothing," nor does he put the "TM" designation after their logo.

In early 2005, a California company named House Swimwear, LLC registers www.houseswim.com, sets up a Website (no e-commerce yet), and files a federal trademark application for the word "House" under the following:

IC 025. US 022 039. G&S: Clothing; namely swimwear, boardshorts, bikinis and coverups.

Here are some questions/concerns:

1) Will the federal application get denied due to the common law trademark stemming from the houseclothing.com Website?

1a) What does a trademark examiner do in a case like this? Will they flat out deny the application, put geographical restrictions on the use of House Swimwear's mark, or ???

2) Can houseclothing.com claim nationwide common law trademark use because of their Website?

3) If the application gets denied, is there any differentiation in the law with respect to t-shirts and say, bikinis? Would houseclothing.com have a strong trademark infringement case against House Swimwear, LLC if the company decides to goes ahead and manufacture/sell bikinis without a federally registered mark?

4) If House Swimwear, LLC designed bikinis under the "House" brand prior to 2002, yet never sold them across state lines, does this have any bearing on the trademark application, and if so, should that fact be added to the application?

5) House Swimwear, LLC also has a logo based on the "House" name...should the application be amended to include this logo, or does this matter?

Thank you for your advice! ;-)

 

[Comcommittal]

To be honest with you I have many similar questions myself. However, I'll share the little bit that I've gleaned from all of my trademark research.

Someone more knowledgeable, please correct me where I'm wrong.

1) It's my understanding that the trademark examiners only search the federal trademark registrations / applications and don't perform any common law search. See the first two paragraphs.

2) My understanding of the way this works . . . assuming the name qualifies for trademark protection and your mark is confusingly similar (if it's not confusingly similar, then there's no problem at all), if the senior user does not have a federal registration they will have common law rights in the areas where they have actually used the mark. I believe you would be able to get a federal registration, and you could prevent the senior user from expanding outside the areas in which they have already used the mark, but you wouldn't be able to use it in those areas or prevent them from doing so.

3) That's a gray area. The main test is whether they are confusingly similar. An attorney specializing in trademark law or someone with knowledge of case law and actual court judgements would probably best be able to answer that question.

4) Unless there's an existing federal registration that's confusingly similar, I don't think that will have any bearing on your application. However, I believe that could be very significant if a dispute were to arise with the other company you're concerned about, for the reasons mentioned in #2.

5) My understanding is that trademarking a logo is a somewhat separate issue from trademarking a name or word mark. I suspect that registering the word mark would be your priority, though you might very well also want to protect the logo.

 

[ImMike]

To be honest with you I have many similar questions myself. However, I'll share the little bit that I've gleaned from all of my trademark research.

Someone more knowledgeable, please correct me where I'm wrong.

1) It's my understanding that the trademark examiners only search the federal trademark registrations / applications and don't perform any common law search. See the first two paragraphs.

2) My understanding of the way this works . . . assuming the name qualifies for trademark protection and your mark is confusingly similar (if it's not confusingly similar, then there's no problem at all), if the senior user does not have a federal registration they will have common law rights in the areas where they have actually used the mark. I believe you would be able to get a federal registration, and you could prevent the senior user from expanding outside the areas in which they have already used the mark, but you wouldn't be able to use it in those areas or prevent them from doing so.

3) That's a gray area. The main test is whether they are confusingly similar. An attorney specializing in trademark law or someone with knowledge of case law and actual court judgements would probably best be able to answer that question.

4) Unless there's an existing federal registration that's confusingly similar, I don't think that will have any bearing on your application. However, I believe that could be very significant if a dispute were to arise with the other company you're concerned about, for the reasons mentioned in #2.

5) My understanding is that trademarking a logo is a somewhat separate issue from trademarking a name or word mark. I suspect that registering the word mark would be your priority, though you might very well also want to protect the logo.

Thanks for your comments, much appreciated. One of my questions is, does the existence of the houseclothing.com Website -- from which they sell t-shirts -- create a nationwide common law trademark? I'm sure there are court cases that set precedence for this, which is why I'm asking.

I thought the examiner would search common law databases, but if they don't, would federal trademark trump the common law tradermark?

 

[davezan]

1) Will the federal application get denied due to the common law trademark stemming from the houseclothing.com Website?

My frequent consultation with some experts tell me that the application might
get accepted. The more specifics yet avoiding infringing on other marks of
similar classes, the better.

1a) What does a trademark examiner do in a case like this? Will they flat out deny the application, put geographical restrictions on the use of House Swimwear's mark, or ???

It's a case to case basis. Either they'll deny it outright, or send it back saying
what needs clarification but leave it open for possible acceptance...I think.

Now this is where I'll also say anyone's free to correct me.

2) Can houseclothing.com claim nationwide common law trademark use because of their Website?

Common law trademarks only apply to the area the party is using it for.

3) If the application gets denied, is there any differentiation in the law with respect to t-shirts and say, bikinis?

T-shirts and bikinis are different pieces of clothing, you know.

Would houseclothing.com have a strong trademark infringement case against House Swimwear, LLC if the company decides to goes ahead and manufacture/sell bikinis without a federally registered mark?

Unless the owner of houseclothing.com has a federally registered trademark,
what they can possibly do is prevent the other from setting foot in their
territory.

I thought the examiner would search common law databases, but if they don't, would federal trademark trump the common law tradermark?

I think they won't necessarily search for common law marks because, again,
common law marks don't have to be registered. That's where retaining an
attorney comes in.

But having a registered trademark gives more benefits otherwise not offered
by common law.

ImMike, I think what you're really asking is "Can one party sue the other for
trademark infringement and get their domain name?". Is that it?

 

[Comcommittal]

Please excuse any redundancies from what davezan has posted -- I wrote this before I read his post.

I thought the examiner would search common law databases, but if they don't, would federal trademark trump the common law tradermark?

I'm not an expert, but based on my research, a) they don't perform a common law search, and b) even if you receive federal registration, it won't trump their common law rights in the areas where they have used the mark.

One of my questions is, does the existence of the houseclothing.com Website -- from which they sell t-shirts -- create a nationwide common law trademark?

That's a lovely question. It's a gray area. Because trademark law is so antiquated there's no clear cut answer. I've been told by a trademark attorney that the trend is heading in that direction. My personal opinion is that that interpretation could grant way too much consideration for way too little effort.

Especially in the field I'm in, where I'm trying to select a name that I can use as a trademark, there are countless amateurs, dreamers, and hobbyists who plunk down ten bucks to register a domain name and throw up a half assed website. If that's enough to grant them exclusive national rights to a name, then I'll be damned.

If you actually ended up in court a variety of factors would be taken into consideration. I don't know this for a fact, but I imagine that the nature of the goods and services would be a factor.

Say there's some little mom and pop store, a single location in whatever city and state, and they put up a website, well it wouldn't make much sense to interpret that as giving them rights to their name on a national level.

If, however, it's an ecommerce site like Amazon, well, maybe that would be interpreted differently.

Common law trademarks only apply to the area the party is using it for.

That's a hazy area though. It would become a question of whether the party had established an association between the mark and their G&S with consumers nationwide or in any given area via the website. That's why if it's your mark it's so valuable to register it -- it automatically gives you "national priority" regardless of actual use of the mark in a given area.

T-shirts and bikinis are different pieces of clothing, you know.

That doesn't necessarily matter though. The main test is whether the marks are confusingly similar -- it doesn't have to be associated with exactly the same G&S.

ImMike, I think what you're really asking is "Can one party sue the other for
trademark infringement and get their domain name?". Is that it?

I could be wrong, but I believe he just wants to use the mark for his business and is concerned that the existence of the other party's website has given them rights to the mark.

 

[ImMike]

Comcommittal, thank you for your insight!

could be wrong, but I believe he just wants to use the mark for his business and is concerned that the existence of the other party's website has given them rights to the mark.

That's exactly right. It's the grey area with regard to the Website that's so confusing. If I may, can any of you recommend a good trademark attorney I can consult with? Someone who is well versed in intellectual property as it pertains to the Web.

 

[Comcommittal]

You're welcome, just take everything I say with a grain of salt. I'm no expert, and I'm pretty much in the same boat as you.

Maybe your best bet is to talk to an attorney familiar with the laws in California. I'm in NH, so I can't help you there. It's tough to find a good attorney. The first one that I worked with was totally inattentive to my situation and wasted a lot of my time. A couple tries later I found a good guy. At $200/hr the advice wasn't cheap, but if you're serious about your trademark you have to be prepared to shell out some cash. Just try to find someone who's going to devote some attention to you.

 

[Comcommittal]

Check out this information (make sure it takes you to the "Nationwide Priority" heading). See particularly the "How the Internet may affect nationwide priority" section. Naturally, I can't speak for the accuracy of this information.