Registered My Book in Copyright, but Someone else Has the Same Title As Trademark

[pancakehand]

No sir, not me.

[jk]

then it would seem there is a third party, at least, in your group. Do a Google search for Vortex Man. There are multiple hits. Some obviously just user names but some are other uses that might conflict with your use.

[pancakehand]

So since my use of publishing this book doesn't interfere or have anything to do with the use of the guy owning the trademark, it would be fine to publish the book?

[jk]

what throws me is their claimed use is "promoting public awareness of environmental issues and initiatives". Does that mean that is what their business "vortex man" does or is "vortex man" the guy that stands in front of an audience and gives a speech? I'm kind of lost on their use.


If it is a fictional character, I could see a possibility of conflict. If they promote their butt in the same geographical area as your book is distributed, then there could be confusion (if your vortex man is a character in the book anyway). A company like that might intend on making something like a comic book or some other advertising literature to promote their lessons. I am a bit lost on this.

Not that an internet search is definitive but I cannot find anything concerning vortex man and their stated use other than the TM (actually an SM -service mark) filing.

A little bit of looking did come up with this:

http://tarr.uspto.gov/servlet/tarr?r...entry=85330659

it states there is currently an extension in place while the USPTO awaits a statement of use.

I would almost guess they are not actually using the mark yet.

[pancakehand]

Hey thanks for helping with this, it's pretty important to me. I also couldn't find them actually using "vortex man" in anything. Isn't ownership of a name actually earned by using it in a product, instead of just trademarking it and not doing anything with it? Because I'm almost ready to send my book out to the world, and It'd kill me to have to change the title because somebody is cybersquatting on it.

[jk]

Yes. I cannot recall what it is offhand but they even have a classification for it. It basically is when a mark is not being used in commerce but there is intention to do so. It allows an entity to have their mark already registered as soon as they begin using it as an active and registered mark.

One of the biggest problems with trademarks and such is; even if the claimed owner does not have a valid challenge, if they have enough money, they can still initiate a suit which you would have to defend. Many people just don't have the money to finance such a situation and simply stop using the mark.

It is essentially a SLAPP suit but for IP instead of tort law.

[pancakehand]

I'm thinking the best route is to try buying the trademark. The trademark site "Advises trademark owners to record the ownership transfer with the Assignment Recordation Branch." Got any tips on how I would go about doing that? (assuming his legal contact responds to my message, and he is willing to sell it.)

[jk]

well, I would think writing a letter to the TM owner or their legal rep and opening some level of communication with them addressing the possibility would be the way to go. Never negotiated for the sale of a TM so I have no idea what one may be worth. If time wasn't so critical for you I would suggest waiting to see if they actually established the TM but since you are wanting to distribute your book ASAP, it kills that possibility.


the site you linked is simply the means of transferring registration from one owner to another. Do take notice of the reservation in parenthesis (second paragraph). I did not see their application listed as an ITU (intent to use) but as it appears, they have not used it in commerce either (hence the lack of definition of use and listing of first use in commerce).


If this Vortex Man might become a reoccurring character for you, at least for the purpose of being a character in your books (and maybe a movie someday ) it may be beneficial to own the mark. If this works out for you, a signed copy for all the little people that helped you along the way might be a nice thing to consider .

[pancakehand]

Ok, I'm going to keep looking into buying the trademark, I hope this all works out. Your help won't be forgotten, thanks.

[Conrad Hunter]

If you have the money to buy a trademark and you don't want to change the name of your book or character, then you might consider some strategic moves that would render the opposing registration of less value. Trademarks are registered in classes of goods and services. There are trademarks in other classes you will need to protect your mark on the web, in movies, on clothing and so forth. If you get those kinds of registrations you rather box in the other trademark and getting them to sell will likely be easier as they will be very limited with what they can do with theirs.