My company essentially provides case management services to patients and their families while they are receiving medical care.
The registered company is a non-profit in a different state that provides charitable fund raising services to assist person's undergoing cancer treatment.
No, that name belongs to someone else, and they got to the market before you. Your competitor has a federal trademark in the same class, class, 44 for medical services, as your mark, if you had tried to regsiter one, would be in, and if you did try to register the name now, it would likely be refused because of this competitor with earlier obtained rights. Federal TM rights cover the whole country, so even if you're just operating in CA, your competitor has rights here too.
It doesn't matter that your company provides different medical services than they do, since there are no TM sub-classes, just the 45 broad classes. In fact, class 44 encompasses beauty services and agricultural services.
Hopefully you haven't invested much time or effort in your company's name, and can change it. Hire a TM/business lawyer to help you choose an available and viable business name, TM, and domain name, and to set you up with an appropriate business entity, business insurancem and to help you protect your own IP rights.
Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.
Trademark owners who own an unrestricted federal registration for a mark enjoy the exclusive right to use the mark nationwide to brand the goods or services identified in the registration -- with some very significant limitations.
The trademark registrant CANNOT enforce its trademark rights -- even its federally registered rights -- until the owner puts into concrete action a plan to enter the marketplace within the particular geographic area where an alleged infringer is doing business AND the owner may do so only if the alleged infringer began its use of the registered mark [or one confusingly similar] AFTER the trademark owner registered its trademark rights.
In short, if you began use of your company name before the other company registered its trademark rights then the other company's federal registration does not prohibit you from continuing to use your company name.
And even if the other company federally registered its mark first you can still continue to use your company name until such time as the other company begins to do business in your geographic area.
A mere internet presence is NOT equivalent -- or even analogous -- to doing business throughout the country and so the countless non-interactive and limited use e-commerce websites out there do not suffice for nationwide use of the marks shown on those sites.
There are many concurrent users of the same mark used to brand the same services [not so much, though, for goods] but which are offered in geographically remote parts of our country. Most of those trademark rights are not federally registered but some are federally registered in unrestricted trademark registrations and some in concurrent use registrations.
For example, the owner of the federally registered "Ooffy Dooffy Bedding" trademark which does business only in Florida and Georgia cannot stop me from opening an "Ooffy Dooffy Bedding" store in California. But I'd have to change my store name if the first user started selling bedding in California.
Trademark [and trade name] rights often become a tangled web that only the trademark attorney's deft hands can unweave. If you're already invested in your company name then spending time with such an attorney is a good idea. If you have not yet named your company then picking one different from the one already registered is wise.
Good luck.
It depends on when you started using your company name. If was before the federal owner was registered, your use is grandfathered in, but is limited to the geographic market served before the other's registration date.
If you used it after this date, then you are operating at peril. As soon as the registered owner enters your area and finds out about your company, you will be forced to change names. If this is your situation, it's best to implement a name change sooner, rather than later.
Kevin B. Murphy, B.S., M.B.A., J.D. - Mr. Franchise
