discuss Companies with similar trademarks, same market.

[mr-x]

Company 1: Using domain goTMWORD.com - doesn't have a registered TM.

Company 2: Using TMWORDs.com - registered TM is TMWORDs + "Super Center"

Company 1's use predates company 2's use.

Who wins?? Can company 1 stop company 2?

 

[jberryhill]

Who wins?

Who wins what?

As is usual with these sorts of "fill in the blank" questions, there is simply not enough information to make any sort of rational guess, since it really depends on what "TMWORD" might be. It also depends on the ability of a person of unknown experience to understand what they might be seeing in what I assume is a US trademark registration record, if that's what you are looking at to determine what the registered mark is.

A couple of examples demonstrate the futility of this kind of question.

1. "VAPE SUPER CENTER"

Okay, so we start with this registered mark:

http://tsdr.uspto.gov/#caseNumber=86530084&caseType=SERIAL_NO&searchType=statusSearch

Now, in a search, you'd find that as "VAPE SUPER CENTER".

But the registered mark is the entire graphical logo, and the registration includes the disclaimer: NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "VAPE SUPER CENTER" APART FROM THE MARK AS SHOWN

Can another company use "goVapes" or can either of them use vape.com or vapes.com. Sure. The term "VAPE" is obviously not distinctive in that market, regardless of whether the word appears as a component of a compound registered mark.

2. "K KMART SUPERCENTER"

http://tsdr.uspto.gov/#caseNumber=77547439&caseType=SERIAL_NO&searchType=statusSearch

This is also a logo mark which includes a large red K and the text "KMART SUPERCENTER".

For those outside the US, "KMART" is one of the larger US retail brands. Quite obviously, nobody is going to get away with using gokmart.com for retail services or anything else with KMART in it.

-----

So, both of those examples might fit the facts stated in the OP, but have outcomes which are polar opposites. Then there things in between, like:

3. "EXPLORE USA RV SUPERCENTER"

There's a lot going on with this logo:

http://tsdr.uspto.gov/#caseNumber=76598576&caseType=SERIAL_NO&searchType=statusSearch

...which also includes separate disclaimers for "USA" and "RV SUPERCENTER".

Would "Go Explore" be confusing for a competitive RV dealer? Or how about "Go Explore USA"? Maybe, maybe not. Those are factual questions for a jury, not legal questions for a judge. In order to figure out how those might turn out, you'd want to know a LOT more about the RV market, the relative recognition or fame of the two parties, and so on, before even making a guess as to how those things might turn out.

I don't just do this for the purpose of being pedantic. You can't tell on a web forum whether or not someone is posing an underdetermined question because they may or may not be on the cusp of a decision that might someday down the road make the difference between whether they lose everything for which they've worked their entire life or not, or just out of idle curiosity.

 

[lock]

Generally 1 has a case to fight but that costs them 100k out of principle generally everyone ends up in tears. Poor Mr Nissan for one well he had name first then TM car company sends him to cleaners. However in his case he was a Nissan from birth they had TM before domain but after his birth.

 

[MapleDots]

Then there are situations of

Super Centre and Super Center