Legal Question in Intellectual Property in California

U.S. Trademark is based on use. If you were in fact, the first to use the mark, prior to Company B's registration, it is likely that you will be able to continue using that mark within the geographical area that you are currently using it. Company B will have the right to continue conduct business under the mark for the entire U.S. because of the federal registration.

Company B having been the first to register the mark, you will be prevented from registering your mark and expanding your business geographically, unless of course Company B's trademark is cancelled or abandoned.

However, if Company B can prove that aside from being the first to register the mark, they were in fact the first to also use the mark, they could bring an action against you for trademark infringement and to prevent you from using the mark.

Feel free to contact me or consult with an attorney in your area. It would be a good idea for an attorney to review the facts involved and discuss your options.

Jim Betinol

Partner

Withrow and Betinol Law

www.wibelaw.com

E: [email protected]

P: 424.229.2560

F: 424.258.7001

Disclaimer: This communication does not create an attorney-client relationship and such a relationship can only be formed through a signed written agreement. This communication is not legal advice and should not be solely relied upon in making your legal decisions. Any situation depends on many different facts and specific laws that require an in-depth legal consultation to evaluate the best solution for your needs.

In addition to what the previous answer says, note that trademarks are specific to certain groups of products or services. Therefore, it is possible for three different companies to use the name "Passionate Purple" if one makes lipstick, one makes paint, and the third makes Zinfandel.

I agree with the above responses, but I would like to add that you may be able to continue to use your name to identify your company, but if you begin to market online there could be additional issues (i.e., if you purchase a domain name that contains the other party's trademarked word they can likely snatch that domain name from you).