Can a Word Mark be enforced retroactively?

[FlyingRon]

Ok, that just threw my understanding of the issue out the window. It clearly states prior use is not a basis to object so, where does that leave a person with common law rights to a mark where another entity registers that mark; A claim of being allowed to use it due to prior use?

but that brings something else you posted throwing me:

if you cannot object to a registration filing due to prior use, what were you suggesting in that statement?

There's a limit to what you can argue ex parte in front of the examiners. Unfortunately, prior (non registered) use is not one of them. She can argue that the applied for mark is overly generic or descriptive to receive registration, or that a lawsuit (which might discuss the prior use) is already in progress.

 

[oohlalaw]

Ron, it appears it is still pending and possibly not even published for opposition yet, or if published, the opposition period is still open:

Correct.

And we do use it for commerical purposes. Sorry if that wasn't clear. We sell a DVD with (nearly) the same name as the mark in question, and from the website they want to prevent us from using.

The attorney just replied to my earlier question: "Yes, you can dispute a mark without having to file one yourself."

 

[quincy]

Anyone who could potentially be harmed by the registration of a trademark can oppose its registration. Therefore, X can prevent the registration of a mark by Y, even if X has not filed his own registration of the mark. It will usually be the owner of a mark, that competes with the mark proposed for registration, who will file a written opposition, however.

The opposition filing must be done within 30 days of the Official Gazette's publication of the proposed mark, although if it is hard to meet the 30 day mark, a 30-day extension can be requested (and then another 60-day one after that, if good cause can be shown for the extension).

Even if the mark has passed the 30-day publication date and has already been placed on the Principal Register, all is not lost for the owner of a competing mark. A cancellation petition can be filed (if done within 5 years or if other conditions apply).

When marks are not distinctive or unique enough for placement on the Principal Register (a descriptive mark, for example), then the mark can be placed on the Supplemental Register. Again, marks placed on the Supplemental Register can also be challenged, by applying for a cancellation of the registration.

Disputes over trademarks will be heard in a proceeding before the Trademark Trial and Appeal Board. The dispute can be resolved with the cancellation of a mark, a USPTO refusal to register one or both of the marks, restrictions on the use of one or both marks, dual registrations of the mark allowed with conditions and restrictions on uses, or registration of one or the other of the marks.

In other words, there are several different ways this can play out, oohlalaw. I am glad you have an attorney in your area to consult with.

 

[oohlalaw]

You're welcome from all of us, oohlalaw.

And, if you have the time to post back some time later with what happens with your trademark dispute, it would be interesting to hear how it is resolved.

Good luck.

Here's a follow-up to this thread. The following is a simple summary.

I checked the Official Gazette every week for 5 months until the mark in question appeared in the OG. A few months later, the owner of the mark started up the demands again. As we had used the term in question in commerce before the owner, we knew we had leverage. We resolved the matter by selling one domain name (that of the exact registered mark) to the owner, once owner agreed to not go after us for the other similar domain name we own (the title of our DVD). We managed to handle this on our own after a few phone consultations with two trademark attorneys.

Thanks again to everyone for your input and help in this matter.

 

[quincy]

Here's a follow-up to this thread. The following is a simple summary.

I checked the Official Gazette every week for 5 months until the mark in question appeared in the OG. A few months later, the owner of the mark started up the demands again. As we had used the term in question in commerce before the owner, we knew we had leverage. We resolved the matter by selling one domain name (that of the exact registered mark) to the owner, once owner agreed to not go after us for the other similar domain name we own (the title of our DVD). We managed to handle this on our own after a few phone consultations with two trademark attorneys.

Thanks again to everyone for your input and help in this matter.

Thank you for the update, oohlalaw.

It is nice to hear that you were able to handle the dispute over the domain name in an amicable fashion. That is not always possible so you and the owner of the registered trademark are to be congratulated.