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?
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.
David Aldrich and Jack Mevorach agree with this answer
3 users found this answer helpful
Lawyers, want to be a Justia Connect Pro too? Learn more ›
- (916) 704-3009
- View Profile
- Answered
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.
Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.
The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.
Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.
