Is amount of business a factor?

JSonnab...

Generally speaking, no, your sales volume (your use in commerce volume, if you will) is not relevant.  

To maintain your trademark rights, though, you must take some affirmative action.  If you don't you greatly risk losing your mark.

- Jeff

various...

What affirmative action can he take, at least commercially, other than to "continue to sell online and in a small number of stores?"  What if his means are limited?  How much additional burden on the trademark holder, who has already jumped through the hoops of registration and is actually marketing his product, is it fair to place?  Trademark registration, to have any value, surely ought to amplify a trademark's holder's ability to defend his/her mark.  But if a mark is continually vulnerable to attack from those with deeper pockets, then registration would appear to have little evident or useful purpose, except among like-sized, or similarly endowed entities.  But if you mean that he ought to take legal action rather than commercial action, does not the same rule apply: that whoever can pay the most generally will win?  How this fosters a healthy public policy environment is difficult to discern.   Would not a system of bribery ultimately be more efficient and predictable, if not more honest in the naive sense?

JSonnab...

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various...

Affirmative commericial action might be, for example, to increase spending on advertising, in order to make better known his use of the mark, or it might be to attend a national trade show associated with his business for the same purpose.  Maybe he's just been lazy and hasn't had any serious lack of means.

None of the questions was rhetorical.  But I readily can imagine that you found the questions irrelevant to the legal discussion.  I do not think that they are.  Questions about the fairness of outcomes seem to me to be always relevant to legal discussions, with this reservation: that usually nothing can be done about clusters of unfair outcomes from within a particular legal system (ours, or canon Law, the Sharia, continental statute law, etc.) at a particular time.  They need to get addressed politically first.

In this connection, a lobby-related forum might be useful.  Many patent and trademark related issues get very heavily lobbied.

JSonnab...

It's not that I found your points irrelevant to the legal discussion, it's just that most of your points missed the mark.  I represent the "little guy" almost exclusively, and my clients have been very able to protect their marks against infringers large and small.

You should educate yourself on the way things actually work, not how you think they might work, and then come back for a real discussion.  I'd gladly discuss policy issues with you.

- Jeff

various...

I think I hit the mark pretty well.  In Washington, DC, where I have long lived and worked, I've been involved in more than my share of court cases, and generally have come to know, and sometimes to savor, how human affairs work.  

Good that you represent the little guy.  But I know that you know that a great many little guys have been unable to bring or to sustain meritorious cases because of simple financial weakness.  There just aren't enough of you to go around.

patents...

Being first in time is far more important than size.  Did you perform a "full search" including a search through common law marks at the time you applied for the registration?  If someone else had earlier use than you, the competitor could possibly take a license from the earlier user.  They could possibly file a cancellation action against your registration if it is not incontestable.

Is your registration inconstestable (did you file an affidavit after five years of continuous use)?  If so, this limits potential defenses that the competitor could otherwise use against an action that you would bring.  They cannot challenge validity or ownership.  They could still challenge the registration on grounds of being generic.

You should talk to your attorney right away.  They should do some research and take action if appropriate.  If it is identical goods and identical mark, if you were first in time, and if the mark could not be considered to be generic, you probably have a very strong case for infringement.  

If you do nothing, they will have an argument that you acquiesced to their use.

mikepro1

no, the mark is not incontestable (less than five years).  The opposing party has not licensed the mark from someone else.  I am just worried that if it goes to court, a judge might say that the public preceives the owner of the mark to be the infringer because of more visibility.

Also, my mark is a word mark and I have used it in a variety of designs and styles.  The infringer has used the words of my mark within, for instance, a leaf pattern.  Do I then have the right to use my mark within a different but similar leaf pattern?

Thanks for everyone's input.

JSonnab...

Contrary to what variousquestions has suggested, the amount of use is not legally relevant per se, provided you have effectively continuous use in commerce (more precisely, that you have use in commerce preceding the infringer's without any interceding abandonment).

Word marks are actually quite broad in scope and should cover all stylized uses of the word mark.

- Jeff

various...

Amount of use does make a difference if his sales are confined to a small geographic region, thus are not truly national.  Which is why I suggested that he attend a national trade show and/or boost his advertising, provided that it is national.  Otherwise, what is to keep his adversary from arguing that his registered trademark lacks national presence, nothwithstanding scattered internet sales and despite his bona fide intentions to give it such a presense?  His adversary may then suggest carving out a small regional exception for him, based on actual use, all the while demanding the whole rest of the country.
Size is merely a proxy for financial strength.  If he is operating on a shoestring (which  he intimates), he may not be able to afford a attorney, except briefly (pun not intended).   The adversary who is a financial 800-pound gorilla simply may choose to litigate him to death.  Assuming that the product, whatever it is, has a market worth the fight.