Dover, DE asked in Intellectual Property and Trademark for Delaware

Q: Would this situation be considered trademark infringement? Details provided. Thank you!

In 2016 A partner and I formed a product oriented company. We spent months of planning and research to choose our company name and product name. We also consulted with two attorneys in choosing the product name. We proceeded to purchase a domain, file a Delaware trademark registration, and a trademark with the USPTO. Both were examined and approved in early 2017. As of May 8, 2018 I noticed on the USPTO website, a foreign/ hong kong based company has filed a trademark application with the USPTO for the same wordmark and class of goods claiming a priority date of 2013. No known verifiable evidence has existed regarding their use of the wordmark prior to ours. Our application with the USPTO was published for opposition and we have advertised heavily and prominently since the beginning. A simple google search by the alleged company would have shown us using the mark, if there was any legitimate claim they had to it. Wondering best way to handle this! Thank you so much.

2 Lawyer Answers

Benton R Patterson III

  • Trademarks Lawyer
  • Dallas, TX

A: The USPTO may deny the application based on the conflict with your registration. I would continue to watch the application. If it is published for opposition, you may want to retain an attorney to oppose the registration. It is also possible that both trademarks can exist concurrently if the other company is truly a prior user.

Andrew Zulieve Esq

  • Trademarks Lawyer
  • Waldoboro, ME

A: My initial thought is that your mark registration is safe. Priority refers to the filing date afforded to foreign applicants meeting certain criteria. I would guess that your mark will proceed through the process without negative impact from the foreign application.

Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.

The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.

Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.