Trademark opposition/advice - Apparel

[jnr47]

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

I have owned a website for many years along with the domain name associated to it. I recently decided to switch directions and create an apparel company based on the domain name - as it is a fairly recognizable name. When I went to Trademark it, a company which also was in the apparel industry had trademarked it. They havent produced any clothing with the name I am using but they were a successful company back in the late 80's, early 90's and they literally just went ahead and trademarked 100's of names related to their brand name - which included mine.

The mark expired in December 2012 but apparently there is window for them to renew with they just filed the paperwork to renew this week. They have NEVER produced anything with the name I am looking to use although they are claiming "intent to use"

My entire concept is based on my brand name - so changing the name is not an option. Can I contest the renewal? Certainly my pockets arent as deep as theirs so I am not looking for a legal battle as my company isnt even off the ground yet.

Also, it looks like this company is just in the licensing game - meaning they just look to license their TM's. Would licensing hurt my chances of ever being able to sell my company in the future?

REALLY desperate right now for some clarity as it seems I am SOL. It just stinks because they aren't even using the mark.

Please help me understand my options. Should I just move forward?

 

[Zigner]

So, you made a web site based on another company's brand and are now upset that they may want to assert rights to it? Or, am I confused?

 

[jnr47]

So, you made a web site based on another company's brand and are now upset that they may want to assert rights to it? Or, am I confused?

Take the website out of the entire equation. It really has nothing to do with it other than I have been operating it for years without any TM issues. Also, the TM holder has not "asserted" any rights at this point to anything. I am just doing my due diligence prior to moving forward with my apparel idea.

Thanks.

 

[quincy]

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

I have owned a website for many years along with the domain name associated to it. I recently decided to switch directions and create an apparel company based on the domain name - as it is a fairly recognizable name. When I went to Trademark it, a company which also was in the apparel industry had trademarked it. They havent produced any clothing with the name I am using but they were a successful company back in the late 80's, early 90's and they literally just went ahead and trademarked 100's of names related to their brand name - which included mine.

The mark expired in December 2012 but apparently there is window for them to renew with they just filed the paperwork to renew this week. They have NEVER produced anything with the name I am looking to use although they are claiming "intent to use"

My entire concept is based on my brand name - so changing the name is not an option. Can I contest the renewal? Certainly my pockets arent as deep as theirs so I am not looking for a legal battle as my company isnt even off the ground yet.

Also, it looks like this company is just in the licensing game - meaning they just look to license their TM's. Would licensing hurt my chances of ever being able to sell my company in the future?

REALLY desperate right now for some clarity as it seems I am SOL. It just stinks because they aren't even using the mark.

Please help me understand my options. Should I just move forward?

A trademark is not considered abandoned unless it is not used in a continuous fashion for a period of three consecutive years or more, at which time the USPTO will presume the mark has been abandoned (and this presumption can be overcome by the trademark holder by furnishing the USPTO proof indicating the company intended or intends to resume use of the mark).

Contesting abandonment or contesting a renewal of a trademark (although, again, there is probably no reason for the other company to "renew" the mark at this point in time - all they need to do is start using it again in commerce) would be an expensive endeavor and probably not one worth your money pursuing.

It seems as though, based on what you have posted here, that you are indeed SOL - but run all of the facts by an IP attorney in your area. The attorney can personally look at your site, review your plans, and investigate your potential competitor's business, to see if you have any hope of developing your apparel line using the trademarked name of someone else's apparel company.

Good luck.

 

[jnr47]

A trademark is not considered abandoned unless it is not used in a continuous fashion for a period of three consecutive years or more, at which time the USPTO will presume the mark has been abandoned (and this presumption can be overcome by the trademark holder by furnishing the USPTO proof indicating the company intended or intends to resume use of the mark).

Contesting abandonment or contesting a renewal of a trademark (although, again, there is probably no reason for the other company to "renew" the mark at this point in time - all they need to do is start using it again in commerce) would be an expensive endeavor and probably not one worth your money pursuing.

It seems as though, based on what you have posted here, that you are indeed SOL - but run all of the facts by an IP attorney in your area. The attorney can personally look at your site, review your plans, and investigate your potential competitor's business, to see if you have any hope of developing your apparel line using the trademarked name of someone else's apparel company.

Good luck.

I appreciate your response Quincy! It looks like they basically are the business of licensing their trademarks. Do you know anything about licensing of trademarks from a licensee standpoint? I think it would be my only option at this point......

 

[quincy]

Before you decide that licensing is your only option, I again recommend you have an attorney in your area review all of the facts.

As the owner of a mark, a trademark holder can authorize another party to use their mark for commercial purposes, and many large companies license their marks. But these licenses to use a trademark must be in writing and they must carefully detail exactly what it is that is being licensed (ie, a university authorizing a tee-shirt company to create and market university-based tee shirts).

If the license is not specific, a trademark holder can lose all rights to the mark.

You will need to contact the owner of the mark and work out a license agreement. Any agreement should be reviewed by an attorney so that the rights of all parties are ensured. Again, these licenses must be written, must be drafted with care, and must be signed by all parties.