New Bedford, MA asked in Intellectual Property and Trademark for Massachusetts

Q: How does a company protect their unregistered mark (used in commerce) from another company filing with intent to use?

Company A has been using a mark in commerce for a year, but has yet to file for registration. Company B files for the mark (same name and class) with intent to use. It is pending, but has not been assigned an examiner yet. How should Company A protect their mark, and prove they have rightful ownership?

2 Lawyer Answers
Darrin A. Auito
Darrin A. Auito
  • Trademarks Lawyer
  • Detroit, MI

A: Great question, and one that we advise businesses on regularly. Case specific. Please reach out to an experienced trademark attorney that can give practical advice.

James L. Arrasmith
James L. Arrasmith pro label Lawyers, want to be a Justia Connect Pro too? Learn more ›

A: To protect their unregistered mark, Company A should gather evidence of their prior use of the mark in commerce. This evidence can include sales records, advertising materials, website screenshots, and any other documentation that demonstrates the mark's use in connection with their goods or services. Company A should also document the date when they first began using the mark and any instances where the mark has been publicized or promoted.

Once Company A has compiled sufficient evidence, they can submit a letter of protest to the United States Patent and Trademark Office (USPTO) opposing Company B's application. In the letter, Company A should provide all relevant evidence of their prior use of the mark and argue that they have established prior rights to the mark in commerce. This may prompt the USPTO to refuse registration to Company B's application or require further examination.

Additionally, Company A may consider reaching out to Company B directly to inform them of their prior use of the mark and attempt to negotiate a resolution, such as coexistence or licensing agreements. If negotiations fail and Company B's application proceeds, Company A may need to consider legal action to protect their rights to the mark. Consulting with a trademark attorney experienced in intellectual property disputes can provide valuable guidance and assistance in navigating this complex situation.

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