Discussion:
I was contacted by a school that has a servicemark in Florida and they asked me to stop using their servicemark. After I reviewed the trademark documents, the name seems to be merely descriptive and geographically descriptive. This school was already denied a federal servicemark for these reasons.
I want to move to invalidate the company's mark that was registered with the state of Florida. Which court do I file such a complaint with?
I am aware that common law trademark still exists.
Rev. Dr. Alain Perez, PhD, JCD
[email]aperez@worldhopeacademy.org[/email]
Answer:
I was contacted by a school that has a servicemark in Florida and they asked me to stop using their servicemark. After I reviewed the trademark documents, the name seems to be merely descriptive and geographically descriptive. This school was already denied a federal servicemark for these reasons.
I want to move to invalidate the company's mark that was registered with the state of Florida. Which court do I file such a complaint with?
I am aware that common law trademark still exists.
Rev. Dr. Alain Perez, PhD, JCD
[email]aperez@worldhopeacademy.org[/email] Well, you'll want to talk with your attorney about proper forum and venue, but generally, the proper forum would be the Federal District Court in the district in which the other school is located -- that is, if they are claiming common law trademarks under the Lanham Act. If they are simply claiming state law trademark rights, then you could file in the superior court (or the Flordia equivalent) in the county in which the school resides.
However, before you can go to court, you must have an "actual controversy" -- in other words, then must have already threatened to sue you, or at least strongly implied that they would sue you, if you don't stop using the mark. If that's the case, you can file an action for declaratory judgment, and ask that the mark be found to be unenforceable or invalid and the you are not infringing.
In any event, you'll need a lawyer for this, and that person can give you more information once you've spoken with them.
Answer:
Thank you for your reply. They already gave me a cease & desist letter. I will probably move for a declaratory judgment.