Q: What do I do when you become aware someone is using your registered trademark in another state?
I obtained my trademark for "The Cheesecake Fairy" last year. I have been in business for over 7 years and finally decided to trademark my name. A bakery in another state is now calling themselves "The Cheesecake Fairy" and I fear this will cause great confusion for when I expand to other regions. What should I do?
A: Generally speaking, if you were in business FIRST and got the federally registered trademark FIRST, then you may want to contact a trademark lawyer to look at all the facts and consider sending a cease and desist letter. Best of luck! See you at the top!
A: First you should check to see when the other business started using the name. If they used it prior to your trademark registration being complete in 2021, then that other business will have rights to use that name in their marketing area. To clarify, they will not have rights nationally, your registered federal trademark gives you that right except where there is another business using the same or similar name prior to your federal registration. Other than a business that was using the name prior to your trademark registration, you should have priority rights to the name. If you learn that the other business just started using the name after your trademark was registered, then you should retain counsel to immediately send a “cease and desist” letter letting the owner know that they have violated your federal trademark rights and need to stop immediately. Good luck!
Fritz-Howard Raymond Clapp agrees with this answer
A: Your federal trademark registration for THE CHEESECAKE FAIRY (no. 6377579, for baked goods and store services since 2018) provides the ability to sue infringers in federal courts throughout the nation. Whether you can sue in your own state or in the state of the infringer, is a question that an experienced litigator should review based on the facts of the case.
A: If the other party you are referring to is a cheesecake operation based in Southern California, that company registered with the state in 2019. That does not necessarily mean it only started using CHEESECAKE FAIRY in 2019 and not before, but it does suggest that. Also, the website for that company offers shipping and does not offer pickup. This is one element an attorney would consider in determining where to file suit. If the infringer has advertised and/or sold to consumers in the Western District of PA, that may be enough to establish jurisdiction there.
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