Trademark Issue Help?

Factual Questions
1

So, I’m trying to do the insane: Start a local newspaper. There is already a daily in this market (a small town in Ohio) but it’s held in contempt by all and sundry. I smell market opportunity!

I have a name I want. Simple enough. There was a paper by this name in the 1800s. But the current paper bought them sometime back in the mists of time. They haven’t published under that banner for about 80 years I think.

What’s my trademark issue there? Would it count as having abandoned that trademark? I did a search here and got nothing. But I don’t feel confident enough that I’d covering all the bases and I’m outside of my normal skill set.

I can consult a PTO attorney if I have to but wanted to bounce it off my beloved Dopers first. Can anyone give me some (non-binding, for the legal types) advice?

2

If the trademark is not in the USPTO database, and it hasn’t been used in 80 years, it is quite likely abandoned and up for grabs. It would require a court to determine this is truly the case if they want to put up a fight, but you’re likely to be OK.

An attorney can give you more details, of course.

3

This is not an uncommon issue.

The New York Sun is a daily paper which started publishing in 2002. It borrowed the name of a paper which published from 1833-1950, and uses the same masthead. There is no connection between the two, other than (I suppose) a desire to make readers think they’ve been around longer than 4 years.

4

Not that the Sun existed as a trademark until the mid-60s: the paper merged with the World-Telegram (making it the World-Telegram and Sun), which stayed in business until it merged with the Journal-American and the Herald Tribune to from the World Journal Tibune in 1966 (which folded soon after the merger).

5

IANAL, but my understanding of trademark law suggests that if the mark hasn’t been used for that long, it is probably technically abandoned. If it had been held by a defunct company, or one that still existed but was no longer publishing a newspaper, you’d probably have no problem.

But the fact that the company that nominally holds it is the one you are proposing to compete with makes me think you will have a problem. Unless they are an extraordinarily open-minded and benevolent bunch, I suspect they won’t take kindly to your trying to appropriate “their” name. And even if you have the law on your side, they can file a nuisance suit that will be a real pain in your neck, assuming their pockets are deeper than yours.

Here’s how I know about this: the first name I chose for my newsletter had a syllable in common with the name of a leader in the industry I cover. (Just to be clear, they aren’t competing publishers.) It wasn’t a problem for two years, but then, for reasons I won’t bore you with, they decided they wanted me to change the name.

My lawyer told me that they had no case, but that it would cost me about $400,000 to defend the name in court, and there’d be no guarantee that if I won I’d be able to recover that amount. So I agreed to settle, meaning they gave me a large sum of money to change the name. The fact that they paid me shows who was in the right: if I’d really been infringing their trademark, as they claimed, they would have insisted on my paying them, or at least giving up the name without compensation.

So unless you have reason to think your competitor won’t make a stink, or have no fear of entering into a legal battle with them, it might be easier just to look for another name.

If you’re really set on using that one, you might consider approaching your competitor asking them to sell you the old mark for a small sum. Your pitch: their legal claim on it is weak and they’re not getting any benefit out of it now, so why not take some cash? Then it’s only a matter of how much you’re willing to pay. Almost any sum they’re likely to name will be less than the cost of a lawsuit.

Of course, they may decide to be assholes about it either way, so be thinking about that alternative name.

Good luck.

6

Australian registered trade mark attorney and IP lawyer, here. In all likelihood its abandoned. There has been at least one case in my jurisdiciton where someone has successfully sued for effectively leeching off the (substantial) residual reputation of an effectively abandoned brand.

I own the domain name of an abandoned brand of jewellry (it seems to have stopped work in the 1960s), mostly because I like the goods they produced. If someone popped up and said they once owned the trade mark, I’d be tempted to say too bad.