Is my TM application in jeopardy?

[truthiness]

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

I have an app in progress with USPTO.
It's published for opposition and I believe the last day is tomorrow (5/22/2015)

Basis details:
--teas plus, Dec. 06, 2014
--fanciful mark, text only
--class 42
--used in commerce
--no other apps for this mark in any class

On December 31, 2015, received an email from someone who had purchased a domain name for my mark and noticed I had an app with the USPTO in progress. He asked me if I wanted to sell my rights or purchase his domain name. I told him I was not interested at this time, but would keep it in mind (purchasing the domain name).

On May 15, 2015, I noticed 2 new applications for my mark on the USPTO site. I noticed they were from the same person who sent me the email on 12/31. One app is in class 42, the other is in class 35. Both are intent to use. Both descriptions are (in my opinion) describing an unknown service provided via a website. It's unclear exactly what the service is although the one in 35 seems to be more along the lines of business consultation services.

On May 18, 2015, I emailed back to the person who offered to purchase my mark/sell his domain name. I asked him what he was planning. He did not reply.

On June 18, 2015, I received an email from a lawyer representing the other person registering the same mark. He included a pdf, which was an offer for a coexistence agreement. In the letter he said our marks don't conflict, so I could "protect" my mark by entering into a coexistence agreement. The letter also said that if I did not reply within 30 days, it would mean I do not object to them moving forward with their application and they will "enforce their use of the mark should I try to expand into the types of services they provide."

How do you think this will pan out? Is it possible for a big company to out-muscle a little solo LLC small business?

Thank you!

 

[quincy]

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

I have an app in progress with USPTO.
It's published for opposition and I believe the last day is tomorrow (5/22/2015)

Basis details:
--teas plus, Dec. 06, 2014
--fanciful mark, text only
--class 42
--used in commerce
--no other apps for this mark in any class

On December 31, 2015, received an email from someone who had purchased a domain name for my mark and noticed I had an app with the USPTO in progress. He asked me if I wanted to sell my rights or purchase his domain name. I told him I was not interested at this time, but would keep it in mind (purchasing the domain name).

On May 15, 2015, I noticed 2 new applications for my mark on the USPTO site. I noticed they were from the same person who sent me the email on 12/31. One app is in class 42, the other is in class 35. Both are intent to use. Both descriptions are (in my opinion) describing an unknown service provided via a website. It's unclear exactly what the service is although the one in 35 seems to be more along the lines of business consultation services.

On May 18, 2015, I emailed back to the person who offered to purchase my mark/sell his domain name. I asked him what he was planning. He did not reply.

On June 18, 2015, I received an email from a lawyer representing the other person registering the same mark. He included a pdf, which was an offer for a coexistence agreement. In the letter he said our marks don't conflict, so I could "protect" my mark by entering into a coexistence agreement. The letter also said that if I did not reply within 30 days, it would mean I do not object to them moving forward with their application and they will "enforce their use of the mark should I try to expand into the types of services they provide."

How do you think this will pan out? Is it possible for a big company to out-muscle a little solo LLC small business?

Thank you!

The date your application was published for opposition was December 22, then?

It is hard to say how all of this will pan out for you. Even if the other party does not oppose your registration now and your mark is placed on the Principal Register, the other party can petition the USPTO for cancellation of your registration for up to five years after your mark was published in the Official Gazette.

If a petition for cancellation is filed by the other party, there will be a hearing before the Trademark Trial and Appeal Board to resolve the matter - and there are several ways the Board can choose to resolve the dispute.

For a few examples, the other party could be refused registration of their mark, or restrictions could be placed on how the other party can use the mark, or the other mark could be registered and restrictions could be placed on both your use and the other party's use of the mark (this would be similar to a coexistence agreement).

Even if a mark is not registered or even if a mark's registration is denied or cancelled, it is the use of the mark in commerce that confer rights in the mark. Another's infringing use of your mark can be challenged at any time.

And, depending on facts, you could be in the position, once your mark is registered, to acquire the other party's domain name without having to purchase it.

I recommend that you have an IP attorney in your area review the emails you received previously and the letter you received from the attorney. It is probably better for you to address any possible challenge to your mark now.

 

[truthiness]

The date your application was published for opposition was December 22, then?

Thanks for your quick reply.

My application was published for opposition on May 12, 2015.

 

[quincy]

Thanks for your quick reply.

My application was published for opposition on May 12, 2015.

Ah. Okay. I am getting confused by your dates.

If your mark was published on May 12 in the Official Gazette, and no one has filed an opposition to prevent your registration, your mark should be registered. But you will hear from the USPTO if someone has filed a timely opposition. An administrative hearing will then be scheduled.

The other company cannot "enforce" a mark that is not yet in use. An intent-to-use application means that the other company intends to, but has not yet, used the mark in commerce - although in order to file an ITU, the company had to show actual plans for use. If their intent-to-use application was filed after your regular application, I am not seeing why this other company is thinking they have any muscles to flex.

Class 42 covers a wide range of services and I can see where there might not be an overlap or a conflict with a dual use of the mark. For example, if you are selling scientific equipment and the other company is marketing legal services, there is little likelihood that consumers would be confused by the marks and what they identify. But the trademark examiner will determine if a dual use of the mark would be a confusing one, once the other company is ready to file their regular application.

Again, review everything with an IP attorney in your area. The most I can tell from what you have written is that the company appears to be one that is prepared to give you grief. But I do not know why.

 

[truthiness]

...the company appears to be one that is prepared to give you grief. But I do not know why.

Ugh. Hope not.

I'm going to find a good attorney in my area.

Thanks again.

 

[quincy]

Ugh. Hope not.

I'm going to find a good attorney in my area.

Thanks again.

Here's hoping that you receive your certificate of registration for the Principal Register from the USPTO and that the other company gives up on its attempts to use the same name.

Good luck. And thank you for the thanks.