Help - Foreign Company Applying for Harmful US Trademark, Possibly Targeting My Biz

[quincy]

Well I would do the written stuff but I'm not exactly up for trying to do a deposition since I'm not an attorney.

Thanks a lot, that is extremely helpful as was your other link. That's exactly the kind of help I need.

What about this:

It's looking like if I were to choose to forgo opposing their application, I stand a good chance of simply filing a successful application of my own. What about that?

From your WIPO link, note the part in bold:

"4. Admissions

This is a device used to limit the issues in dispute. One party will ask the other to admit certain facts. For example, in an opposition proceeding where the issue is relative grounds, the opposer may ask the applicant to admit that it first used its mark on a certain date. If the applicant admits the date asserted in the request for admissions, and that date is subsequent to opposer’s date of use, the Board can consider this as evidence that the opposer has priority."

The foreign company filing under 1B for the US axiomatically shows they have no first use yet, but my first use has already been provably in place since at least January (not the year or two I had thought, unless I can find more proof I used it earlier).

Why would WIPO put a statement like that in there unless it means that the TM Board considers those who have first use as having priority over those who do not, such as in the event I were to file my own application under 1A and the foreign company wanted to oppose my application instead? How about that?

To be honest, I hate not being able to use the "LWhatever" mark myself, and had thought how great it would be to use the "LWhatever" mark on top of an "L.Whatever" website domain, but I would at least still be happy just to be able to continue using "L.Whatever" the mark on top of "L.Whatever" the site.

Should I even bother opposing? I don't really care if they are determined to use the "LWhatever" mark they already use overseas far far away. Would it be easier, better, or safer and less of a hassle to simply file my own 1A application for the similar mark I have already been provably using?

P.S. Also, while I can certainly prove I have been using the similar mark, there is no way I can claim or prove that it is actually "famous." Does that matter? I have first use, but not "fame." At least not in any normal way of understanding "famous."

Quite frankly, if you have only been using the mark since January and you have not established a consumer base, you are probably best off creating a trademark that is unique to you and your company - and forget trying to oppose the registration of a mark that has been in widespread use overseas.

It seems to me that your time, effort and money could be better spent in promoting your company under a new mark.

Reviewing the particulars with an IP attorney in your area is an option I recommend (perhaps you can find a benevolent law professor who will look over the matter) but this does not seem a good do-it-yourself project.

Good luck.

 

[John USA]

Quite frankly, if you have only been using the mark since January and you have not established a consumer base, you are probably best off creating a trademark that is unique to you and your company - and forget trying to oppose the registration of a mark that has been in widespread use overseas.

It seems to me that your time, effort and money could be better spent in promoting your company under a new mark.

Reviewing the particulars with an IP attorney in your area is an option I recommend (perhaps you can find a benevolent law professor who will look over the matter) but this does not seem a good do-it-yourself project.

Good luck.

Thanks a lot again for this advice. I also feel like perhaps just filing my own 1A application and seeking other assistance would be best for me now. I don't feel up to trying the opposition myself or want to hire an attorney for only a "lack of real intent to use" based opposition. I'm confident I can handle filing my own 1A TM application as a DIY, however, given my own background and experience despite not actually being an attorney. So I will very possibly do that soon, and like I said I already did that once before, but I also like your advice about seeking someone like a benevolent law professor. However, I did find a business that has been using the mark for a long time now before this foreign company, and they appear to have a lot to lose if this company's applications go forward. So I have alerted this other company to everything going on and urged them to file opposition. If I find any more such companies I will do the same again as well.

 

[quincy]

Thanks a lot again for this advice. I also feel like perhaps just filing my own 1A application and seeking other assistance would be best for me now. I don't feel up to trying the opposition myself or want to hire an attorney for only a "lack of real intent to use" based opposition. I'm confident I can handle filing my own 1A TM application as a DIY, however, given my own background and experience despite not actually being an attorney. So I will very possibly do that soon, and like I said I already did that once before, but I also like your advice about seeking someone like a benevolent law professor. However, I did find a business that has been using the mark for a long time now before this foreign company, and they appear to have a lot to lose if this company's applications go forward. So I have alerted this other company to everything going on and urged them to file opposition. If I find any more such companies I will do the same again as well.

Thanks for the update, John USA.