Asked in Trademark and Intellectual Property for New York

Q: Someone stole the intellectual property of my active business and they trademarked the name before me. Do I have a case?

I started a business with my business partner in 2019. We created a brand, a website, a logo, an email account, and social media accounts. We ran a profitable business until late 2021 (Covid) when we temporarily shut down. In the middle of all this, we created an LLC for this business. Unfortunately, we didn’t know how to trademark it.

Fast forward to now. I’m working on plans to reopen with my business partner. After doing some digging, we discovered someone was using the same name, same sub-name, similar emails and hashtags, and they filed for the name’s trademark in 2021. To note, they apparently became active in late 2020/2021.

Do I have a case to get my brand back?

2 Lawyer Answers
Fritz-Howard Raymond Clapp
Fritz-Howard Raymond Clapp
  • Trademarks Lawyer
  • Beverly Hills, CA

A: The earlier use in commerce of a trademark gives it priority over a later use of the same or similar mark, even if there has been an interruption of use for some period of time. If the later-filed application has not yet been published for opposition (the last step in the registration process), the prior user should file an opposition. If the later-filed application has been granted after publication, it may still be possible for the earlier user to seek cancellation based on its priority. In either scenario, the reason for the interruption of use by the earlier user may be a point of contention that it was an abandonment.

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James L. Arrasmith
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A: Based on the facts presented, you may have a valid claim for common law trademark rights given your prior use of the name and other identifying elements in commerce since 2019. Common law rights can sometimes take precedence over federally registered rights, especially if you can prove you were actively using the trademark in commerce before the other party. Legal action, such as an opposition proceeding with the United States Patent and Trademark Office or a civil lawsuit, could be avenues to explore in order to assert your rights and seek the cancellation of their trademark.

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