Expert: Shannon Moore - 7/28/2010

Question
QUESTION: Hello darling!
I have a long time friend who is a small business owner. He owns the company Warpaint Designs and has been active since 2006. Now I thought he was a smart guy... and he is Brilliant! but he didnt copyright his name, some one just within the past month or two went ahead and claimed it.
Now, he's not just a little t-shirt printer in a basement. He's got his own store in the Lansing Mall (Michigan), and practically has the love and brand loyalty of 13-30 year old Native Americans on reservations country wide, and a large influence with his friends record label who has artists on the radio in Detroit and Lansing. He is a few-man team but they are very well known.

In 2007 I worked for my Tribes newspaper, circulation 5000 lol, and I wrote a story about him and their business. I mean to say, he has been published under that name over 3 years ago. Not to mention endless t-shirts with the name and so on...

Does he have any legal rights now that someone has bought the name from under him? Please tell me he has hope?

ANSWER: Dear Elise,

I did a quick check of the USPTO files for that exact name & nothing came up. The closest I could find is http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=77916410 Is this the one you're referring to? If so, this applicant is only claiming first use since 2009. Your friend technically has common-law rights to the name, at least within his particular trade area.

Federal registration is not required to establish rights in a trademark.  Common law rights arise from actual use of a mark.  Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration.

I'd recommend that your friend contact a trademark attorney about the next best steps.

Hope that helps! I wish you & your friend much success & happiness in all your ventures!

Warmest regards,
Shannon Moore
http://www.tmexpress.com
http://tmexpress.blogspot.com
Twitter @TradeMarkExpres

---------- FOLLOW-UP ----------

QUESTION: I'm Sorry to follow up twice! I PROMISE I wont be one of THOSE people. I was wondering if, in your reply you could include a resource where these laws are shown? You can reply on both and I'll rate them twice lol

Answer
Hi there,

No problem at all! Please feel free to ask any questions you'd like.

Sure, here are some links:

http://tmexpress.blogspot.com/ -- our company blog; can conduct a search for keywords/phrases & relevant posts will pop up

http://www.uspto.gov/trademarks/basics/Basic_Facts_Trademarks.jsp - Basic Facts about Trademarks

http://www.uspto.gov/faq/trademarks.jsp - Trademark FAQs

Let me know if I can help with anything else!

Warmest regards,
Shannon Moore
http://www.tmexpress.com
http://tmexpress.blogspot.com
Twitter @TradeMarkExpres