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Kelly James Kubasta

Kelly Kubasta’s Answers

1 total

  • I have had a blog for 4 years, but someone trademarked the name last year. What rights do I have?

    I have been running a blog for 4 years now. No business or anything associated with it yet, but the blog is a lead in for a full fledged business. I just received a cease and desist letter from a business (same product) who trademarked the name la...

    Kelly’s Answer

    When evaluating trademark infringement, the alleged trademark owner has to meet two basic requirements: (1) ownership of protectable trademark rights; and (2) likelihood of confusion.

    As to ownership of protectable trademark rights, the answer depends on which party can prove prior use of the mark on the relevant goods/services. Since the other party has a federal trademark registration, the territory of prior use is important as well because the federal registration provides a constructive nationwide use. With this in mind, the first question you need to answer is whether your use of the trademark in association with your blog truly predates the claimed date of first use of the other party. If so, then you may have a valid defense and/or a basis for challenging the other party's federal trademark registration.

    As to your question whether you can "revoke that trademark somehow," the procedure for this is either: (1) a petition for cancellation filed with the Trademark Trial and Appeal Board (TTAB); or (2) a declaratory judgment action filed with a federal district court. Of course, the factual basis for challenging the priority of use should be very carefully considered before initiating either option.

    As usual, this is not legal advice and you should consult an attorney to discuss the specific facts of your situation.

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