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

Answered
  • 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

Answered
  • 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.

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