My boyfriend stole my trademark!
Dear Rich: I have a question. My boyfriend has a company that sells tea. I thought up a name for one of the teas — Serendipi-Tea — and he used it without asking me. He even filed a trademark application without naming me! Doesn’t he have to get my permission? I’m so glad you asked. No, your boyfriend does not need to ask your permission to use the name you created for a trademark (although it might have been polite). Trademark rights are granted to the first person to use the term in commerce, not the person who thinks up the name. Hence the legal motto: No trade — no trademark. Your clever wordplay is also not protected under copyright law because copyright does not protect names and short phrases. You may wonder how those high-priced naming gurus get paid when they think up names for big companies — they have written contracts that require payment for the work. So unless your boyfriend had an agreement with you, you’re not entitled to anything. Perhaps the deeper and more meaningful question is whether intellectual property issues will drive a permanent wedge between you and your boyfriend. I would like to think not. Remember, your boyfriend only acquires rights to use the term in regards to tea. You’re alway free to use the name as the title of your tell-all memoir.
March 7th, 2008 at 2:13 pm
I was actually thinking about a name. I used to work for a company that has the name cheapkaraoke.com and they have had it since 2001. It is not trademarked. I want people to know where to find cheapkaraoke items. Can I have the domain name cheapkaraoke.net that is not taken yet and use it for my website? And if so, can I turn around and trademark it?
March 10th, 2008 at 5:48 pm
I assume you mean by “it’s not trademarked” that it’s not registered. You don’t have to register a trademark to have trademark rights. (Check out Nolo’s section on trademark law for more information.) If another company has been using a similar name for similar goods and services (and you knew about it), you’ll have a hard time acquiring trademark rights or a registration. - RS