Trademark Infringement - Competittor May Have Used It First But I Have The Trademark

[stratchey]

What is the name of your state (only U.S. law)? New York

I will keep this brief because I wrote a long post and was logged out and it disappeared.

A lawyer filed a trademark for me in the summer of 2012 and it was published in early 2013 - right before filing I did a Google search and searched the trademark database and no conflicts.

Due to various personal / family/ health issues I didn't get to use the trademark as early as I anticipated and my website didn't launch until summer 2015. I just did a Google search of my trademarked name and the term clothing and this Etsy/Ebay like seller popped up first in the results selling clothing under my trademarked name. Their facebook page (also using my trademark) claim they have been in business since 2012.

From what I've been reading since they used it first they may have a leg to stand on but how can that be when I paid a lot of money for a lawyer to file the trademark for me and paid for every extension until I was ready to prove use?

I hope I am misreading and I can get them to stop using my name. While the type of clothing is different I can't have them coming up first on Google and Facebook for my trademarked name.

Thank you in advance for any feedback.

 

[quincy]

What is the name of your state (only U.S. law)? New York

I will keep this brief because I wrote a long post and was logged out and it disappeared.

A lawyer filed a trademark for me in the summer of 2012 and it was published in early 2013 - right before filing I did a Google search and searched the trademark database and no conflicts.

Due to various personal / family/ health issues I didn't get to use the trademark as early as I anticipated and my website didn't launch until summer 2015. I just did a Google search of my trademarked name and the term clothing and this Etsy/Ebay like seller popped up first in the results selling clothing under my trademarked name. Their facebook page (also using my trademark) claim they have been in business since 2012.

From what I've been reading since they used it first they may have a leg to stand on but how can that be when I paid a lot of money for a lawyer to file the trademark for me and paid for every extension until I was ready to prove use?

I hope I am misreading and I can get them to stop using my name. While the type of clothing is different I can't have them coming up first on Google and Facebook for my trademarked name.

Thank you in advance for any feedback.

I am not sure I am understanding your post correctly.

If you filed an Intent-to-Use application in 2012 and you did not file the necessary Intent-to-Use extensions with the USPTO (showing good cause for each extension) and/or if you did not file an Allegation of Use for your ITU application in a timely fashion, then your Intent-to-Use application would have lapsed. If you filed the appropriate extensions and these were approved, and if you have since filed an Allegation of Use for your ITU application in a timely fashion, then you are able to complete your registration of the mark.

BUT, the fact that your ITU application date might pre-date the other company's use of the mark, this would not have prevented the other company from using the mark to identify their own company before your mark was registered.

OR, if you completed registration of your mark because at the time you were using the mark in commerce, and the registration was not opposed, but you then stopped using the mark, the other company might be able to demonstrate superior rights to the mark and challenge your registration, claiming that you abandoned the mark. You could have lost your rights to the mark by not enforcing your rights in the mark when the other company started using it.

OR, if your mark identifies a business that is different than that of the other user of the mark, you both might be able to keep the marks as identifiers and peacefully coexist in the marketplace - because no consumer confusion will be generated by the dual use.

OR, if the date of the registration of your mark is before the use by the other company of the mark, you can challenge their use of the mark as infringing on your rights, if consumer confusion has been or is likely to be generated by the dual use.

Perhaps some clarification might be nice.

 

[stratchey]

Thank you so much for your reply Quincy and my apologies for not being clear.

If you go to the to the TESSS (Trademark Electronic Search System) and look up my trademark you will see listed the filing date (Late Summer 2012) and a published for opposition date of early 2013. No opposition was ever presented to me.

You can file for an extension of use which I did (and was approved for) 4 times now I am FINALLY using the trademark and was getting ready to submit proof of use when I came across this company who has NO TRADEMARK on the name.

Reading these forums I got the impression that because they used the name first (they claim their company started in 2012 but there is no month listed) they have some kind of rights to that name even though only I have a trademark on it.

I think the gray area for me is: while my filing date was Summer of 2012 I didn't technically start using it until 2015 and if they have been using the name since 2012 (even thought they didn't have a trademark on it) they may have a leg to stand on and that strikes me as unfair if true. Maybe I am misunderstanding.

There is in my mind a real conflict as it is the same industry if not the same exact product.

 

[FlyingRon]

Understand that they possibly indeed may have a trademark, they just do not have registration.
It would appear given the dates involved, that your assertion of intent may indeed be challengeable. Anyhow, there is no Trademark police that's going to run out and arrest these guys. You're going to have to litigate your complaint against them as it. As you are beginning to realize, your failure to use the mark in a timely fashion may jeopardize your position.

 

[quincy]

Thank you so much for your reply Quincy and my apologies for not being clear.

If you go to the to the TESSS (Trademark Electronic Search System) and look up my trademark you will see listed the filing date (Late Summer 2012) and a published for opposition date of early 2013. No opposition was ever presented to me.

You can file for an extension of use which I did (and was approved for) 4 times now I am FINALLY using the trademark and was getting ready to submit proof of use when I came across this company who has NO TRADEMARK on the name.

Reading these forums I got the impression that because they used the name first (they claim their company started in 2012 but there is no month listed) they have some kind of rights to that name even though only I have a trademark on it.

I think the gray area for me is: while my filing date was Summer of 2012 I didn't technically start using it until 2015 and if they have been using the name since 2012 (even thought they didn't have a trademark on it) they may have a leg to stand on and that strikes me as unfair if true. Maybe I am misunderstanding.

There is in my mind a real conflict as it is the same industry if not the same exact product.

I'm afraid your latest post does not clarify your situation for me.

A mark is not eligible for registration until it has been used in commerce as an identifier, although a mark can be "reserved" for later use by filing an Intent-to-Use application. An ITU reserves the mark for 6 months after the USPTO has approved the mark (and approval can take awhile). Once approved by the USPTO, and if you have still not used your mark in commerce after 6 months from approval, you are able to file extensions to your ITU. BUT registration of your mark cannot occur until you begin to use your mark in commerce, which requires you provide evidence of use to the USPTO with your filing of an Allegation of Use.

Once registered, you are able to use the ITU application date as the priority date, should someone else claim they used the mark before you did.

So, you are saying that you applied for registration in 2012. What sort of application did you file and on what was it based? Did you file an ITU application?

You are also saying you did not use the mark until 2015 and the other company has been using the mark since 2012, correct?

In the US, the first to use a mark in commerce (generally) will be considered the owner of the mark. An ITU filing does not prevent another company from using the same mark, so the other company has had as a trademark the same mark as yours, if they have been using the mark to identify their business product or service since 2012. Registration is not necessary to gain trademark rights.

If you have an attorney, what does your attorney say about the other company's trademark?

 

[stratchey]

I'm afraid your latest post does not clarify your situation for me.

A mark is not eligible for registration until it has been used in commerce as an identifier, although a mark can be "reserved" for later use by filing an Intent-to-Use application. An ITU reserves the mark for 6 months after the USPTO has approved the mark (and approval can take awhile). Once approved by the USPTO, and if you have still not used your mark in commerce after 6 months from approval, you are able to file extensions to your ITU. BUT registration of your mark cannot occur until you begin to use your mark in commerce, which requires you provide evidence of use to the USPTO with your filing of an Allegation of Use.

Once registered, you are able to use the ITU application date as the priority date, should someone else claim they used the mark before you did.

So, you are saying that you applied for registration in 2012. What sort of application did you file and on what was it based? Did you file an ITU application?

You are also saying you did not use the mark until 2015 and the other company has been using the mark since 2012, correct?

In the US, the first to use a mark in commerce (generally) will be considered the owner of the mark. An ITU filing does not prevent another company from using the same mark, so the other company has had as a trademark the same mark as yours, if they have been using the mark to identify their business product or service since 2012. Registration is not necessary to gain trademark rights.

If you have an attorney, what does your attorney say about the other company's trademark?

Sorry my post did not clarify and I thank you for your patience. I don't know the ins and outs of trademarks which is why I hired an attorney to do it. I guess what was done was an "Intent To Use"

I was issued a notice of allowance in the spring of 2013 and since then I filed and received 4 extensions of use. I was under the impression that the intial ITU and the extensions protected me from any other company using my name while I got my business up and running and it is shocking to me that I paid several hundred dollars for a trademark attorney and another several hundred filing extension of uses and in the meantime another company came along without doing research on the name and started using without having to pay a cent for the name/trademark.

I do not have an attorney at the current time - I just paid one to do the initial work.

Now that the trademark is actively being used I was looking into hiring an attorney to handle the Statement of Use and then obtain my Certificate of Registration BUT what is the use at this point of spending more money if someone is already using it?

 

[quincy]

Sorry my post did not clarify and I thank you for your patience. I don't know the ins and outs of trademarks which is why I hired an attorney to do it. I guess what was done was an "Intent To Use"

I was issued a notice of allowance in the spring of 2013 and since then I filed and received 4 extensions of use. I was under the impression that the intial ITU and the extensions protected me from any other company using my name while I got my business up and running and it is shocking to me that I paid several hundred dollars for a trademark attorney and another several hundred filing extension of uses and in the meantime another company came along without doing research on the name and started using without having to pay a cent for the name/trademark.

I do not have an attorney at the current time - I just paid one to do the initial work.

Now that the trademark is actively being used I was looking into hiring an attorney to handle the Statement of Use and then obtain my Certificate of Registration BUT what is the use at this point of spending more money if someone is already using it?

If all extensions were filed on time and approved, and you have not let the ITU lapse, and you would be filing your Allegation of Use for your ITU application in time, you might want to go ahead and file. You will need to provide the USPTO with evidence of your use of the mark in commerce. The registration of your mark will then proceed.

The date of filing of the original ITU application will be the date you can use to challenge the use of any same or similar marks. If the date of the ITU application was before the use of the same or similar mark by the other company, your mark should be given priority.

That said, the other company has a good chance of showing ownership of the mark through their use of it since 2012 as an identifier for their company's goods/services. The other company can oppose the registration of your mark. The USPTO will then schedule a hearing. It is possible that your mark will be denied registration, or it is possible that there will be restrictions placed on either your use of the mark or on the use of the mark by the other company ... there are a whole host of decisions that could come from the hearing.

If your investment in the trademark is one that would be hard to lose, you could be smart to move ahead with the registration - but I would definitely have a trademark attorney in your area review all facts first, especially since an opposition to your registration seems likely.

Good luck, stratchey.

 

[stratchey]

If all extensions were filed on time and approved, and you have not let the ITU lapse, and you would be filing your Allegation of Use for your ITU application in time, you might want to go ahead and file. You will need to provide the USPTO with evidence of your use of the mark in commerce. The registration of your mark will then proceed.

The date of filing of the original ITU application will be the date you can use to challenge the use of any same or similar marks. If the date of the ITU application was before the use of the same or similar mark by the other company, your mark should be given priority.

That said, the other company has a good chance of showing ownership of the mark through their use of it since 2012 as an identifier for their company's goods/services. The other company can oppose the registration of your mark. The USPTO will then schedule a hearing. It is possible that your mark will be denied registration, or it is possible that there will be restrictions placed on either your use of the mark or on the use of the mark by the other company ... there are a whole host of decisions that could come from the hearing.

If your investment in the trademark is one that would be hard to lose, you could be smart to move ahead with the registration - but I would definitely have a trademark attorney in your area review all facts first, especially since an opposition to your registration seems likely.

Good luck, stratchey.

I cannot tell you how grateful I am for your response.

My gratitude is surpassed only by my absolute shock that I invested so much money in this trademark, money which could be in severe jeopardy of being completely wasted.

If you wouldn't mind: can you tell me your opinion of what on earth is the purpose of properly researching a trademark to check for issues, filling a ITU and keeping up with extensions when any company can come along and use your name without doing said research and didn't bother to invest a dime in securing the mark? Had they done so maybe two years ago my extension would have been denied and I could have moved on now it is WAY too late. Promo materials, signs, website, SSL, etc. have been invested in the name.

I am honestly flabbergasted.

EDIT: One thing that may play in my favor: I did a search in their county and they never so much as filed a DBA and they are not an LLC or a Corp. That has to count for something, no?

 

[quincy]

I cannot tell you how grateful I am for your response.

My gratitude is surpassed only by my absolute shock that I invested so much money in this trademark, money which could be in severe jeopardy of being completely wasted.

If you wouldn't mind: can you tell me your opinion of what on earth is the purpose of properly researching a trademark to check for issues, filling a ITU and keeping up with extensions when any company can come along and use your name without doing said research and didn't bother to invest a dime in securing the mark? Had they done so maybe two years ago my extension would have been denied and I could have moved on now it is WAY too late. Promo materials, signs, website, SSL, etc. have been invested in the name.

I am honestly flabbergasted.

Most people who file an intent-to-use application do not let nearly as much time elapse as you did before using the mark in commerce and securing registration of the mark, for one thing.

In addition, trademark holders are, on their own, solely responsible for policing the marketplace looking for infringers. They alone are tasked with the responsibility of informing those using their mark that a use infringes on their rights. Had you been aware in 2012 that the other company was using the same mark as an identifier for their goods, you could have/should have sent them a notice, informing them that the mark was reserved for use by you - and provided them with your USPTO application date. This could potentially have prevented the other company from establishing their business under the name you claimed as your own.

The extensions were allowed on your ITU because there were no other applications for registration of the same trademark. But, in the US, registration is not necessary to gain rights. It is first use of a trademark in commerce. In many other countries, it is registration that confers ownership and not first use in commerce.

So, you have a quandary - and I cannot tell you what course of action is the best for you to take. You can move ahead with your registration, with the promise of opposition by the other company using your mark and/or the need by you to stop the other company from using the mark. Or you can find a new trademark to use, and go through the time and expense of establishing that mark as your business identifier. You can file a new regular registration application with the USPTO for this mark, being better prepared now than you were in 2012 because you will be able to show use of the mark in commerce.

I wish you good luck with whatever decision it is you decide to make.

 

[stratchey]

Thanks again Quincy.

I guess at this point I will proceed because this other company never bothered to file a DBA, they are not an LLC nor a Corp. So I can't imagine how they could prove they started their business under the name when they said they did.

 

[quincy]

Thanks again Quincy.

I guess at this point I will proceed because this other company never bothered to file a DBA, they are not an LLC nor a Corp. So I can't imagine how they could prove they started their business under the name when they said they did.

You're welcome, stratchey. Good luck.

 

[justalayman]

I believe you are inappropriately giving weight to the fact they did not file for a business registration. An individual can own a trademark just the same as a business entity. If they, as an individual, used the mark in commerce the rights are earned.

 

[quincy]

I believe you are inappropriately giving weight to the fact they did not file for a business registration. An individual can own a trademark just the same as a business entity. If they, as an individual, used the mark in commerce the rights are earned.

I think stratchey was speaking to the proof that the other company will need to establish their first use of the mark in commerce.

If the other company had state registration or a d/b/a date that predated the ITU application date, the company could have a stronger claim to ownership of the mark, or at least better evidence for the date of first use.

As it is now, with the intent-to-use application filed by stratchey, he appears to have claims to ownership of the mark that are pretty solid, even without his having used the mark in commerce.

I can actually see this going all sorts of different ways, if it gets to the point where the Trademark Trial and Appeal Board is charged with resolving a dispute between the companies.

 

[justalayman]

I think stratchey was speaking to the proof that the other company will need to establish their first use of the mark in commerce.

If the other company had state registration or a d/b/a date that predated the ITU application date, the company could have a stronger claim to ownership of the mark, or at least better evidence for the date of first use.

As it is now, with the intent-to-use application filed by stratchey, he appears to have claims to ownership of the mark that are pretty solid, even without his having used the mark in commerce.

I can actually see this going all sorts of different ways, if it gets to the point where the Trademark Trial and Appeal Board is charged with resolving a dispute between the companies.

Post. #5

Sure sounds like he believes the entity could not have been using the mark in commerce because they had not registered their business.

And even if they had registered their business it doesn't mean they used the mark such as they would have earned rights to the mark.

 

[quincy]

What is the name of your state (only U.S. law)? New York

... I just did a Google search of my trademarked name and the term clothing and this Etsy/Ebay like seller popped up first in the results selling clothing under my trademarked name. Their facebook page (also using my trademark) claim they have been in business since 2012.

From what I've been reading since they used it first they may have a leg to stand on but how can that be when I paid a lot of money for a lawyer to file the trademark for me and paid for every extension until I was ready to prove use? ...

See what I have quoted above of stratchey's first post. He knows that the other company has been operating as a business, selling clothing, on Etsy/eBay. And he says he understands that the other company might have a legitimate claim to the trademark.

His later comment was questioning how the other company could PROVE they started their business when they say they did, though, if they did not register the name. There are several other ways to prove first use other than state registration but registration of the name with the state makes the proving a bit easier. Of course, there is an issue of state registration for sales tax collection purposes or whatever, if the other seller's state requires this - but that would not be a trademark issue.