Unregistered Trademark help...?

[cleirach70]

This is my second post about trademarking a company name. The first post was rather general and from the information I collected along with a little research I came to the conclusion that I can use the TM sign with no cost for my business name. Before we go any further, it is a business that not in use as yet, the only thing that's done is the business plan and the purchase of the domain name which is also the name of the business. From what I understand, to register a trademark in my case I can start the process but will be given a certain time to prove that I am actually using that name to offer services etc. (Or something close to that). However, if I can avoid that for right now and use the TM name to cover my back to some extend I think I will take my risk.
That being said, what exactly need to be done in this process? Do I need to perform an extensive search preferably through a professional before using the TM. What if I do pay to perform an extensive search and find out I am good to go then lets say a year later someone register that exact name, what happens now? Will that person has 100% ownership even though I started using the name before they registered it?
Thanks a lot!

[bedyw25]

Assuming we're dealing with US laws: your earliest registration date in the USPTO will determine whether you have "national priority" over others who start USING the mark after that.

By doing a "clearance search" you will at least obtain some satisfaction that your brand is not already being used (or pending registration) by anyone in a related field. That could change at any time, so you would need to begin USING your brand immediately upon having it cleared, if not also file for registration.

If you have not filed any application for registration, you only have priority in the locale and market where you have ACTUALLY used the brand. Even if someone registers the identical brand for similar goods, they cannot use a federal registration to stop your continued use, unless they filed before your first use. Like you, they will have missed the chance to pre-empt the entire field because they didn't file in time.

In other words, you should start using your brand as soon as you can (free, common-law protection), you should file a federal application (for at least some of your goods or services) as soon as you can, if you want the best protection. It's only $275 for an electronic filing in one class.

[geol19]

Assuming we're dealing with US laws: your earliest registration date in the USPTO will determine whether you have "national priority" over others who start USING the mark after that.

By doing a "clearance search" you will at least obtain some satisfaction that your brand is not already being used (or pending registration) by anyone in a related field. That could change at any time, so you would need to begin USING your brand immediately upon having it cleared, if not also file for registration.

If you have not filed any application for registration, you only have priority in the locale and market where you have ACTUALLY used the brand. Even if someone registers the identical brand for similar goods, they cannot use a federal registration to stop your continued use, unless they filed before your first use. Like you, they will have missed the chance to pre-empt the entire field because they didn't file in time.

In other words, you should start using your brand as soon as you can (free, common-law protection), you should file a federal application (for at least some of your goods or services) as soon as you can, if you want the best protection. It's only $275 for an electronic filing in one class.

bcnu, I have a few follow up questions. My business does not have a storefront. I plan on starting a website and hopefully gain income via ad space . I am temp. in AL now and will be moving soon. How does locale priority even affects me since the business is located in the virtual world?

[reid]

trademarks are based on how the word sounds also = sale, sell, sail are all the same trademark; as are extra and xtra, etc....

you have 3 years from the date of filing to prove that you have earned money on the mark.

If someone else claims the mark, the very last step is a 30 day opposition period. Then it is approved. If it gets approved you can take them to court for 5 more year and a judge will decide.
= you would have to pay legal fees and the whole nine yards.

If there is no current opposition to your name and you are pretty sure you will earn money in the next 3 years, I would file for the mark now. Many people can file the trademark themself and it only costs the filing and finalzation fees = not much money if you are opening a real business.