Notice of opposition received from a lawfirm!

[infocus]

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

I registered a mark and now have received a notice from another company that is claiming they have rights to the mark. However, my use in commerce predates theirs by several years or more. I have the original computer file of the mark on a business card as evidence.

I have to respond to their action. What should I say?

If this case goes to court, what chance do I have against them?

 

[davezan]

Talk to a trademark lawyer. This is one topic that can't be readily answered in an online
forum.

 

[divgradcurl]

Agree with davezan.

But this isn't going to court -- not yet -- this is an action in the USPTO, specifically the TTAB. But you will probably want the assistance of a trademark attorney to help with the opposition.

 

[infocus]

I am working on the opposition, and I have a specific question. It seems to me that the whole matter boils down to who was using the mark in commerce first, and what evidence you have to support that.

I am wanting to show that I have been using the mark in commerce prior to the other party. However, my only evidence is an electronic file. Will this hold up?

 

[divgradcurl]

I am working on the opposition, and I have a specific question. It seems to me that the whole matter boils down to who was using the mark in commerce first, and what evidence you have to support that.

I am wanting to show that I have been using the mark in commerce prior to the other party. However, my only evidence is an electronic file. Will this hold up?

Maybe. If it is time-stamped in some way, it might be sufficient. It won't help, though, if the other side has evidence that they used the mark before you did, and their evidence is better than yours.

In any event, if this is all you have, does it really matter what anyone thinks? You turn it in and give it ytour best shot, and see what happens.

 

[infocus]

They are claiming first use of the mark *four years* after I started using it. So actually my first use predates by quite a bit. It's just that I don't have much evidence to support it. I have some prints of marketing materials with the mark, but those post-date their start date.

So my core evidence, which predates their first use date, is only electronic, with a time stamp on the file That's all I have.

 

[infocus]

When you say "you turn it in" what do you mean?

 

[divgradcurl]

When you say "you turn it in" what do you mean?

You include your evidence as an attachment in your response to the opposition. If you haven't already, you need to start reading up on trademark opposition proceedings.

Actually, I just reread your original post, and I may have misunderstood what you originally wrote. Has the other party filed an opposition with the USPTO, or have they just sent you a cease-and-desist letter, or have they filed a lawsuit against you?

 

[infocus]

Thank you for your fast response! To answer your question, they have filed a notice of opposition with the USPTO, I have received a copy from their lawyer as well as electronic notification.

The Trademark Trial and Appeal Board (TTAB) has issued an order instituting the opposition proceeding and setting trial dates.

 

[divgradcurl]

That's what I assumed, I am glad I was correct.

If you haven't already, you need to become familiar with the TTAB and the TMEP.

http://www.uspto.gov/web/offices/dcom/ttab/index.html

http://tess2.uspto.gov/tmdb/tmep/

and of course, the TBMP: http://www.uspto.gov/web/offices/dcom/ttab/tbmp/index.html

This document, starting with page 60, will give you specfic information on your opposition: http://www.uspto.gov/web/offices/dcom/ttab/tbmp/300.pdf

I was sloppy in my original replies; while you will, in all likelihood, need to include your proof along with a filing at some point, you will not be sending in any evidence with your initial answer. You simply will deny (if applicable) their assertions, and you will plead any affirmative defenses that you might have. That's it for now.

The linked documents will give you some indication of what you need to do. Also, if you have access to a law library, McCarthy on Trademarks is a treatise which contains a lot of useful information that can help you defend your mark.

 

[infocus]

Very good. Very, very good. Thank you so much for the detailed reply. I am so grateful to you!! I will reply to this thread with any further questions.

Brilliant! Thank you!!!

 

[infocus]

I got McCarthy on Trademarks and Unfair Competition! Should I focus on Volume 6, Chapter 20 Inter Partes Trademark Proceedings in the Patent and Trademark Office?

 

[divgradcurl]

I got McCarthy on Trademarks and Unfair Competition! Should I focus on Volume 6, Chapter 20 Inter Partes Trademark Proceedings in the Patent and Trademark Office?

I don't have a copy of McCarthy in front of me, but that sounds like the right chapter based on the title.

 

[infocus]

The Opposer is citing Lanham Act section 2(d)
Lanham Act section 2(d) says that a bar to registration is "a mark registered in the Patent and Trademark Office." If opposer relies upon a registered mark, applicant cannot attack the validity of that registration by making a claim of priority over that registered mark in the absence of a counterclaim for cancellation." See David Crystal, Inc. v. shelburne shirt Co., 465 F.2d 926. (McCarthy p. 20-51) That is, priority is not an issue in an opposition brought by the owner of a registered mark.

One rationale for this rule is to favor the "long-standing, no-fraudulent registration against the prior user who delays too long in deciding to see registration."

What does this mean and how does it affect me?

 

[divgradcurl]

The Opposer is citing Lanham Act section 2(d)
Lanham Act section 2(d) says that a bar to registration is "a mark registered in the Patent and Trademark Office." If opposer relies upon a registered mark, applicant cannot attack the validity of that registration by making a claim of priority over that registered mark in the absence of a counterclaim for cancellation." See David Crystal, Inc. v. shelburne shirt Co., 465 F.2d 926. (McCarthy p. 20-51) That is, priority is not an issue in an opposition brought by the owner of a registered mark.

One rationale for this rule is to favor the "long-standing, no-fraudulent registration against the prior user who delays too long in deciding to see registration."

What does this mean and how does it affect me?

It means that they are saying that there is already a registered mark out there that predates yours, and that your mark shouldn't have been granted over the earlier mark. What the counterclaim section means is that you can't answer this claim simply by asserting that your use of your mark predates the other's use of the other mark.

If you have evidence that your use of your mark predated the other mark being asserted against you, then instead of an affirmative defense, you would include a counterclaim for cancellation of the other mark. Basically, in this case, you would be filing an opposition against the other mark.

If you don't have evidence of prior use, or choose not to file a counterclaim in opposition against the other mark, then your affirmative defense would be that the existence of the other mark does not preclude your mark from registration.