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Trademark with USPTO and infringement
Posted by Anonymous . updated on 2/26/2009
I tried to register my trademark with the USPTO and they refused it because another company in the same market registered it before I did. I have used the trademark as my business name since 1998 and in commerce since 2003. I offer services. The other company is using the trademark to describe their books (goods that they sell) and applied to trademark it after my first use in commerce. I have tried to contact the company with no luck (per my attorney's advice) as they wont' return my calls. I want to protect my business name from infringement so I'm wondering what I can do if I can't get my trademark registration approved.
Also, I have had locations in other states since I started the business and recently noticed that 2 other companies have been started recently with my business name in FL and GA. At the time I hadn't expanded into those locations, but I did have locations in 10 states and have since expanded into the rest of the states to keep this from happening again. I was slowly expanding my business into all 50 states.
Do I need to send these companies in FL and GA a cease and desist letter?
Thanks.
Answers (7)
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lyza2855
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I am not an attorney, but based upon what you have written, you may possess superior common law rights that would support the filing of a cancellation proceeding against the other party's registration. As it is, if your use rights pre-date the registrant's, the registrant undoubtedly will do nothing, hoping that you will also do nothing to try to stop their use of the mark, thereby duluting your rights in the mark over time.
That said, why have you not discussed this with your attorney, since you've identified that you are working with one? Is your attorney not well versed in trademark law? If he/she is not, you should engage an IP prosecution/litigation specialist and review your options. Good luck.
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JSonnab...
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There are steps you can take to combat third party registrations based on use junior to your own. These can get quite involved, but might also be resolved without resort to TTAB proceedings.
By way of example, I recently helped a client "go after" a registrant for a mark where my client had the senior use. My client was the "little guy" and the registrant a well established, "deep pocket" company. We were able to work out an agreement that allows my client to use and register his mark.
I'd suggest speaking with an attorney on this (as well as your enforcement issue).
- Jeff
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Kristin
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My attorney who helped me set up the LLC told me to contact the other party and try to work it out with them. I have called them several times and they never return my call. I spoke with someone once and they said that so and so would call me back, but they didn't.
I guess I will have to speak with a specific trademark attorney as my attorney has been no help at all in this matter and charged me for the above advice which didn't get me anywhere.
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JSonnab...
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I'm sorry to hear of your experiences with your present attorney. Your idea to get a qualified TM attorney makes sense, I believe.
- Jeff
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clarkla...
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Quote Also, I have had locations in other states since I started the business and recently noticed that 2 other companies have ?been started recently with my business name in FL and GA. At the time I hadn't expanded into those locations, but I did have locations in 10 states and have since expanded into the rest of the states to keep this from happening again. I was slowly expanding my business into all 50 states.
One characteristic of a common law trademark is that it is limited geographically to regions where it is used plus some natural area of expansion. You may not be the senior mark in holder in FL and GA even if you were using the mark in 10 other states.
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Kristin
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So, now I have gone ahead and set up websites for all the states. Does this mean that no one else can use the name in those states since I will have common law usage?
Can I send the GA company a cease/desist letter since I was using the name even though not in GA at the time? I had intentions to use the name, but hadn't expanded to that area yet. The FL company is no longer in business so I'm okay there. Just worried about this GA company that started in 3/2007.
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JSonnab...
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The advice you're asking for now is way too specific for a public forum like this. If you want legal guidance that's worth anything at all, you'll need to find an attorney to advise you directly.
- Jeff
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