Brooklyn, NY asked in Trademark and Intellectual Property for New York

Q: Should I oppose a trademark or file for the same class with detailed description? Their description does not infringe

I have a live trademark for class 025 but the website i've created also offers goods/services under class 035, 041, and 009. I noticed someone filed for class 041 but their description does not infringe on what I'm doing. However considering my website is a community with in person events, social club, entertainment - what do should I do? I don't see an option to "oppose" the trademark and they haven't filed with gazette. Do i wait or file a new trademark claim with the same class but different description? Note that my business name = the trademark name. Hoping my case would be stronger.

2 Lawyer Answers
Erik Špila
Erik Špila
  • Trademarks Lawyer
  • Senec, Slovakia

A: Thats a highly complicated question (questions) and you should definitely seek intellectual property lawyer to duly analyze the details of your case. There is no right answer here as it depends on further variables that you will need to provide in order to get qualified advice.

Fritz-Howard Raymond Clapp
Fritz-Howard Raymond Clapp PRO label
  • Trademarks Lawyer
  • Beverly Hills, CA

A: If your use of the mark for services in class 41 was prior to the date of use in the newly filed application, it would be wise for you to file an application in that class (citing your existing registration in class 25) so that it will be noticed by the examiner of the other applicant's filing. It is taking over six months for a new application to be assigned to an examiner, and nearly a year to be published in the OG if approved by the examiner. A prior date of first use for similar services is of the greatest importance, and whether the mark is also your business name is not significant.

Daniel Michael Luisi agrees with this answer

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