Phoenix, AZ asked in Intellectual Property and Trademark for Arizona

Q: I was contacted by someone who says they own the trademark to a brand that I have been using since 2008. They filed 2015

How can I go after them to reverse the Trademark?

3 Lawyer Answers
Bernard Samuel Klosowski
Bernard Samuel Klosowski
Answered
  • Trademarks Lawyer
  • Greenville, SC

A: First, a point of clarification - a trademark and a trademark registration are not the same thing... they're kind of like a car and its title, or a house and its deed.

If you've been commercially using your mark since 2008 without a federal trademark registration, you have what might be referred to as a "common law" trademark. If the other party filed a federal trademark application in 2015, they probably received a federal registration ~3-4 years ago. So, if you don't have a federal registration but have "seniority," the other (junior) party (even with a federal registration) might not be able to stop you from continuing to use your mark in your geographic area. But you might not be able to stop the other party from using the mark in the rest of the country (unless you can also prove that you've been using your mark all around the country and their mark is likely to be confused by consumers with your mark).

Again, assuming that you don't have a federal registration but the other party does, one option to "go after them" would be to file a Cancellation action at the U.S. Trademark Trial and Appeal Board to cancel their registration. But it would be best to discuss your specific facts and options with a trademark attorney to determine your best course of action.

As an aside, if you DO have a federal trademark registration, you have further options that a trademark attorney can discuss with you. Also, state trademark registrations, the differences in goods/services under the marks, and other factors are further wrinkles that your trademark attorney can discuss with you.

Good luck.

Joanne Belasco
Joanne Belasco
Answered
  • Trademarks Lawyer
  • Boston, MA

A: If you didn't file a federal trademark registration, then you may have some common law rights. However, those rights generally will only protect you in your geographic area, not in the entire country, which is covered by a federal trademark. You should consult an attorney to decide if you only need your trademark rights in your geographic area and what steps to take with the trademark owner. If you run your business for the entire country, such as an online business usually does, then you will probably have to rebrand and file for federal trademark protection. As with most situations, it's important to discuss the matter with an attorney who can get all of the specific details from you and then provide you with your options.

Bernard Samuel Klosowski agrees with this answer

Darrin A. Auito
Darrin A. Auito
Answered
  • Trademarks Lawyer
  • Detroit, MI

A: One option is to file a petitions for cancellation of their trademark - priority. Consult a trademark attorney to discuss your situation so that you take appropriate action to protect your brand. Good luck!

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