Notice of opposition received from a lawfirm!

[infocus]

Opposer has used his Mark since 2004. I have received a registration for my Mark in 2008. Both marks appear to be identical. I have proof I have used my Mark in commerce since 2000 (Affidavits from customers and computer files of copies of business cards, flyers and stickers). My use of Mark is in print form only. Opposer uses his mark on the internet only (to the best of my knowledge). Is my best approach to counterclaim and request his registration be denied, or is my best approach to request a partial restriction on my Mark limited to print advertising?

I have evidence of prior use, so would I then proceed with a counterclaim for cancellation of the other mark and NOT an affirmative defense? Can I do both?

If I can only submit a counterclaim, where would I find guidelines for creating it?

 

[divgradcurl]

Opposer has used his Mark since 2004. I have received a registration for my Mark in 2008. Both marks appear to be identical. I have proof I have used my Mark in commerce since 2000 (Affidavits from customers and computer files of copies of business cards, flyers and stickers). My use of Mark is in print form only. Opposer uses his mark on the internet only (to the best of my knowledge). Is my best approach to counterclaim and request his registration be denied, or is my best approach to request a partial restriction on my Mark limited to print advertising?

When you say, "opposer has used his mark since 2004," did the oppser ever register the mark? When was the mark registered?

I have evidence of prior use, so would I then proceed with a counterclaim for cancellation of the other mark and NOT an affirmative defense? Can I do both?

If you have an affirmative defense other than preexisting use, then you can assert that defense. You cannot assert preexisting use as an affirmative defense if the other party has a senior registration -- all you can do is file for a cancellation of their mark.

If I can only submit a counterclaim, where would I find guidelines for creating it?

Go here: http://estta.uspto.gov/filing-type.jsp, under "file a new proceeding" select "cancellation," it will provide you with a recommended format for how to prepare a cancellation request.

 

[infocus]

Opposer registered the mark after me, last year. The other party does not have a senior registration, I do. However, Opposer's remarks address the various requirements, under the Lanham Act, for registration of a trademark.

As I understand it, a response should address these requirements and rebut Opposer's arguments to the extent that I can or else consider a concurrent registration that is limited by, for example, geographic location as the statutes provide. There may be other things to consider?

(FYI, see my PM for more details...)