What can I do if someone stole my copyrighted name and filed a trademark for it before me? 7 Answers as of August 20, 2013

I've been working on a new comic super hero character that I made last year and had it copyrighted this year. I was about to file for the trademark this month until I noticed someone filed the same name, all in caps as my characters name in the title, and had trademarked my copyrighted name one month after my copyright was filed. I'm looking for legal advice on cases similar to this to serve as a guide as well as an IP attorney. I don't know if this is in the right section to post because I didn't see a trademark category section, only patent.

Ask a Local Attorney. 100% Anonymous. Free Answers.

Free Case Evaluation by a Local Lawyer: Click here
DANIEL NESBITT
DANIEL NESBITT | Hasse & Nesbitt
You'll need to reach out and contact an IP attorney. You have options, but may need to act promptly.
Answer Applies to: Ohio
Replied: 8/20/2013
Webb IP Law Group
Webb IP Law Group | Jason P Webb
Issues like that come down to very specific details and you probably don't want those details plastered on the internet. You should talk with an attorney about the specifics. They will have some questions and can answer your questions about what to do.
Answer Applies to: Utah
Replied: 8/20/2013
Microtechnology Law & Analysis | Daniel Flamm
Fine on using this section for trademark/copyright/patent. Based on your description, it is apparent that you do not clearly understand the distinction(s) between copyright and trademark. They protect different things. A name, without more, can be protected as a trademark after it is used in in commerce to identify a class of goods or services. A copyright protects original works of authorship fixed in any tangible medium of expression. A name by itself is not an original work of authorship. There are differences between registering a trademark and owning one (because trademark issuance requires using the trademark, not merely registering an intent to use the mark). From what you say, you probably should obtain both trademark and copyright protection for your work. If you first used the name in connection with a particular class of goods or services in commerce (e.g. in a publication), and are continuing to use it, you should be able to oppose the another person's later application for a trademark to identify similar things. As you say, you should engage an attorney to assist you since these distinctions can be subtle and enforcement can be relatively complex.
Answer Applies to: California
Replied: 8/20/2013
Sebby Law Office
Sebby Law Office | Jayne Sebby
Copyright and Trademarks protect different things. Marvel Comics has trademarked the name Marvel, as have many other companies. Marvel has the word (and logo) reserved for its business of cartoon characters and comic books (which are protected by copyright). The other registrants use the word in respect to different products/businesses. So someone reserving the same word as you use for your character doesn't necessarily infringe on your copyright of the character. However, if you think that this registrant is deliberately attempting to squat on a work or logo that you are likely to use in the future, file an objection with the U.S. Office of Patents and Trademarks. The USPTO frowns on registrations solely filed to extort money out of someone or company who may have a legitimate claim on the mark. FYI: Names and titles usually don't qualify for either trademarks or copyrights.
Answer Applies to: Nebraska
Replied: 8/20/2013
Banner & Witcoff, Ltd. | Ernie Linek
Yes this is the right place - as we offer comments regarding all aspects of intellectual property - patents, trademarks, copyrights & trade secrets. Here you have the different aspects of protection under the copyright and trademark laws. You could not "copyright" the name of a comic super hero character - as the name is not protectable under the copyright laws. Instead - what you likely obtained a copyright registration for - is a literary work of authorship. See www.copyright.gov for more details - FAQ. The party with the trademark registration had to file for the name, and had to prove commercial use of the name for certain goods or services. Visit www.uspto.gov to look at the file history of the filing made by that party. If the registered mark is for a comic super hero character - and your use of the name was first - you may have a case against the other party. However, if the registered mark is being used in an area unrelated to your comic super hero character - there is no likelihood of confusion and your two uses may be able to peacefully coexist.
Answer Applies to: Massachusetts
Replied: 8/20/2013
    Gerald R. Black, Esq.
    Gerald R. Black, Esq. | Gerald R. Black
    This will probably be determined by which party was the first to use the name in interstate commerce. Even though the other party filed a Trademark Application before you did, if you can prove that you were using the name of the character in interstate commerce (e.g. - on clothing, online, or in a comic strip) you may still prevail if your first date of use was earlier than his. You should seek the advice of counsel. The other party must list his first date of use in interstate commerce in his Trademark Application. Good luck and I hope that this works out for you.
    Answer Applies to: Michigan
    Replied: 8/20/2013
    Law Office of Kirk Buhler
    Law Office of Kirk Buhler | Kirk A Buhler
    You might be able to file a protest with the trademark office and show that you have been using the name prior to the filing date of the other person. If a trademark is acceptable the trademark office will publish a mark for opposition prior to issuing the mark. I don't know what stage the other person is at, but you can check the name and the status at www.uspto.gov in the trademark section. It is possible that they have a different character with the same name or that they are using your character. A copyright is for an artistic expression, while a trademark is a name or mark that is associated with a company or product.
    Answer Applies to: California
    Replied: 8/20/2013
Click to View More Answers: