can someone have IP rights to a company name without owning the trademark or using it
I have a problem. I'm a young startup and we have a member of the team who is holding our company name hostage because he said 'he came up with it' and unless we give him equity we can no longer use it. We've been using the name for awhile, were about to trademark it and are actively seeking investors. Now he tells us we can't use it without him signing it over and he won't. If there were 6 people sitting around the table when the name was decided on can he really 'own' the company name?
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Trademark (TM) rights are based on use (sales or distribution) of a mark in interstate commerce (commerce that may be regulated by Congress -- that covers pretty much everything). TM rights belong to the fist person/entity to use the mark in interstate commerce. There's no "invention right" in trademark law -- you either use it or lose it.
Good luck!
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so because I've been using it for months now, he'd have no legal rights? i just want to be cautious he doesn't start a lawsuit because it would scare off potential investors. or do I just change the name and start over? we just have over 2,500 articles written about us globally with our name on it - I'd hate have to change it.
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Remember, anyone can sue anyone for anything; the issue is who would win. Based on the facts "he 'invented' the name but we've been the only ones to use it commercially," I say you'd win. If you want to avoid the potential for a lawsuit (meritorious or not), the least risky thing would be to change your name. Only you know your risk tolerance.
Best of luck!
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Unlikely the way you have described it, but this sounds like a pretty mess situation. Are there either other names you could use or is there something that this person obviously wants that will make him or her happy?
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he wants equity, be a member of the management team and long term job opportunity - but after doing this, I'm having a hard time believing he'd be good for the company. he also said he would only give us 'use' rights and no investor will go for that. it just seems unfair, since the name was really decided on in a focus group of my team and it there were 80+ names we all submitted and discussed before picking one.
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A "long term job opportuinty?" At a startup?
I would seek an amicable solution if possible, but a long term relationship with this person may not be optimal.
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Sorry to hear. I agree with the above. Trademark rights come with use, not invention. Of course, either party can race to file a trademark registration. The problem is, the other party may oppose during the application process. Even if registration filed, can not stop other party from using the mark in the geographic area where the other party has been using PRIOR to the filing date of the application. Therefore, the issue really boils down to "use," and ability to prove such use.
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so if we've been using the name and have over 2,500 articles written about us in 25+ countries would we have a pretty good chance of proving use? i know it's probably a dumb question, but i'd rather not have to change it - so comes down to how likely the case is for me to win
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Based on the facts as presented, no I don't think he 'owns' the mark. He might have suggested the name, but the company has been using it. Therefore, the common law mark belongs to the company. He could try to oppose it if you tried to register it, but he'd have to prove he's using it. Keep in mind that names of companies don't necessarily get trademark protection. The trademark must be associated with a good or service offered in interstate commerce for a federal trademark.
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Yes. A company name is not necessarily a trademark as well. However, if someone is just using the name as a company name, then technically someone is free to use the name as a trademark. Still, there is not a clear line between using a name as only a company name and also using it as a trademark.
Michael
www.shimokaji.com
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Lara captured it best - use it or lose it.