Suppose I start up a national organization like “HandoutsNotHelpingHands”. Clearly I would want to file a trademark nationwide for “HandoutsNotHelpingHands”. Do I need to file a trademark for every state to prevent someone from using the name “Alabama HandoutsNotHelpingHands”? Would that national trademark be enough to stop them since “Alabama HandoutsNotHelpingHands” is clearly meant to confuse. OR would prior use of “Alabama HandoutsNotHelpingHands”, “Alaska HandoutsNotHelpingHands”, “Arkansas HandoutsNotHelpingHands” etc. be sufficient?
Assuming you have rights to your trademark, the question would be whether the similar “state” mark would induce a likelihood of confusion with your trademark and whether the goods and services you offered were related. If you used your trademark for a charity and the other person used his similar trademark for a photography studio, the likelihood of a person getting the two businesses confused is greatly reduced. It’s also possible that you have common-law rights to your mark (with no state name) in the single state where you do business (let’s say California) whereas someone else could use the same mark in another far away state (like Alabama) without causing any real confusion, so both could legally co-exist. You say you are starting a national organization, so presumably you would have a mark with national recognition. That makes it more likely that the Alabama version of your mark is infringing.
If the marks are confusingly similar and they are being used on similar or related goods, you could sue the user to stop using its similar state trademark.
The U.S. Patent and Trademark office has a pretty good pamphlet on registering a trademark here: http://www.uspto.gov/sites/default/files/BasicFacts.pdf
Not necessarily. The Hoots family registered their Burger King restaurant in Illinois in 1959. A couple of years later, that other Burger King started opening restaurants across Illinois, and the Hoots family sued, on the grounds of “we were here first.” Court cases went back and forth, but eventually the courts recognized the Hoots’ claim in a 20-mile radius of Mattoon, IL. To this day, the only Burger King doing business in Mattoon is the original restaurant owned by the Hoots family.
So you’d better make sure you aren’t moving in on any other HandoutsNotHelpingHands that’s already in business.
Well, you’re right but I alluded to this same issue in my drive-by post. First, I noted that my discussion assumes he has rights in the trademark. Second, I noted that two people can use the same or confusingly similar marks in different geographic areas. Then I noted that presuming he has a mark with national recognition, the other use would be infringing. The example you point out is one where a later trademark holder tried to assert trademark rights against an earlier user with a narrower geographic area. In his hypothetical, Saint Cad is the earlier user with national recognition for his mark.