Do I need a trademark attorney? or Litigation?

Asked over 2 years ago - Los Angeles, CA

I turned in my trademark for a slang word one month before this large company. They sent us a cease and desist letter. Do I have to walk away from the pending trademark? Should I seek an attorney? Is there something that I can do?

Attorney answers (9)

  1. Michael Charles Doland

    Contributor Level 20

    27

    Lawyers agree

    1

    Answered . Of course an attorney would help. First to use in interstate commerce, not first to apply for registration is the criterion for establishing rights. You can try to represent yourself, but against the law firm of a "large company" it won't be a fair fight.

    The above is general legal and business analysis. It is not "legal advise" but analysis, and different lawyers may... more
  2. Anthony B. Cartee

    Pro

    Contributor Level 10

    22

    Lawyers agree

    1

    Answered . My colleagues have already provided you with excellent answers to your questions ... walk away? (depends); seek an attorney? (yes); something i can do? (yes -- but, what you should do is dependent upon additional facts, starting with [1] how much you use this mark in commerce, i.e., how important is the mark to you). It has already been pointed out the difference between an intent-to-use application versus actual use. But, if you're actually using it, been using it, people have associated your company with the word, then you may wish to keep it. Also,

    (2) What does the cease and desist say? Is the company actually using this mark? Have they been for years, or are they "planning" to launch a new product and scorching the earth in front of them? If they haven't used it or if they just applied like you have, perhaps you move to cancel their application. Of course, additional facts would have to be known. Also,

    (3) What is your litigation budget? It is rare that a trademark case (rather in district court or in front of the USPTO) is taken on a contingency basis, so you will be looking at an hourly fight. This is the way big companies literally silence competition ... as a great lawyer once said, "in this country, you're innocent until proven broke." But,

    (4) In all seriousness, there are many many questions to be answered in determining how to respond to a cease and desist. You should speak to an attorney in order to determine what is best for your business ... be mindful though ... this is a business decision / not a personal one just because you're angry about getting a cease and desist. Best of luck to you.

  3. James Juo

    Contributor Level 16

    19

    Lawyers agree

    1

    Answered . Should [you] seek an attorney? YES.

    At this point, you need to consult with a trademark attorney about the specific facts of your case. For example, the first party to use the mark in interstate commerce is a critical issue. If you have not used the mark (for example, you only filed an intent-to-use, or ITU, application), and the other company has used the mark in commerce--then the other company may have superior rights. Then again, maybe the mark is generic, so no one should have trademark rights.

    This answer is for informational purposes only. It is not intended as specific legal advice regarding your... more
  4. Frank Wei-Hong Chen

    Contributor Level 20

    19

    Lawyers agree

    1

    Answered . The answer really depends upon how much you wish to use this slang word as your trademark, and how you want to spend of your own money to fight for it.

    As Attorney Juo indicates, if you have not yet used the mark and only filed an intent-to-use application whereas the large company has already been using the mark in commerce, you will likely lose this fight.

    If you know nothing about trademark law, it would certainly be worth your while to retain a trademark attorney to explain the basics to you.

    The information presented here is general in nature and is not intended, nor should be construed, as legal advice.... more
  5. Daniel Nathan Ballard

    Contributor Level 20

    17

    Lawyers agree

    Answered . Attorney Elman's point that the filing date of an intent-to-use trademark registration application trumps another's actual use in commerce date for trademark registration purposes should not be squirreled away in just a comment.

    Quoting Gerry's comment: "If the large company started using the mark in commerce only AFTER you filed a federal trademark application on an intent-to-use basis, then you could have superior rights provided that you start actually using the mark and get a registration. On the other hand, if, as the respondents to your question seem to assume, the large company has been using the mark nationwide since BEFORE you filed the trademark application, then they would have superior rights. Yes, you should consult a trademark attorney pronto."

    The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and... more
  6. Robert Scott Lawrence

    Contributor Level 14

    14

    Lawyers agree

    Answered . If you filed your trademark application before the company did, you may have rights in the trademark (i.e., the slang word) that are superior to that of the company. It really depends on whether you've been using the mark in commerce, and for how long, and whether you have been using it longer than the company has.

    If you didn't have a trademark lawyer do the initial application to the PTO but decided to DIY, now is the time to sit down with counsel and see (a) whether the proposed mark is protectable, (b) who has superior rights, and (c) whether concurrent regional use is possible based on prior use. There are a whole lot of unknown variables here that any competent trademark attorney should be able to sort out for you.

  7. Curtis Lamar Harrington Jr

    Contributor Level 20

    13

    Lawyers agree

    1

    Answered . What is the $ value of the mark? Is the slang word made up and fanciful, or is it in a dictionary?

    Curt Harrington Patent & Tax Law Attorney Certified Tax Specialist by the California Board of Legal... more
  8. Alexander H Butterman

    Pro

    Contributor Level 13

    14

    Lawyers agree

    Answered . You've received a ton of great answers already (perhaps a record) which I think is a tribute to the manner in which you have asked the question. I think you asked this fairly common question in a very appropriate manner for this forum - enough facts for us to understand your situation but most importantly omitting any identifiable facts and terms to avoid recognition possibly by your potential adversary.

    As the others have said, you definitely should consult with a trademark attorney about your options unless you conclude that your level of time/investment in this mark is not worth more time and investment given your present business plans. There are numerous facts to consider which present numerous options:
    1) There are about a dozen different factors alone which just deterimine whether or not the two marks may be likely to be confused and therefore infringe each other;
    2) There are a whole host of factors concerning who may have prior rights in the mark - filing for registration is not one of them unless both parties rights are merely based upon an intent to use application on file in the USPTO;
    3) All of the various business considerations regarding the costs and values of the mark to your business.
    4) The various possible scenarios between forfeiting the mark, settling with the other party and litigation.

    I believe an experienced trademark attorney can best lay out the groundwork for your situation with a decent initial consultation. I also think that a trademark attorney is better to consult initially for this than a litigation attorney because trademark law is fairly specialized and nuanced. The attorney needs to be more familiar with those specific details of trademark law and common trademark conflict scenarios than with litigation tactics which at this point could be less than 50% likely to be necessary.

    Alex Butterman is a trademark attorney with Staas& Halsey LLP (http://www.staasandhalsey.com), a Washington, D.C.... more
  9. Maurice N Ross

    Pro

    Contributor Level 20

    13

    Lawyers agree

    Answered . If you have received a cease and desist letter, then you definitely need to retain legal counsel. Trademark rights arise from use in commerce, not registration. If you can show that you began using the trademark in commerce before this company, and that the company's use of the trademark could cause consumer confusion, you might prevail. But if this company began using the trademark in its business before you, it will have the upper-hand. Registration is not the determining factor. What matters is who began using the trademark first, the extent to which such use resulting in "secondary meaning" among consumers such that the trademark became well-known or famous, and whether consumer confusion might result if both parties use the trademark. These are complex and sophisticated matters, and you need to work with experienced counsel to handle this correctly.

Can't find what you're looking for? Ask a Lawyer

Get free answers from experienced attorneys.

 

Ask now

27,657 answers this week

3,052 attorneys answering

Ask a Lawyer

Get answers from top-rated lawyers.

  • It's FREE
  • It's easy
  • It's anonymous

27,657 answers this week

3,052 attorneys answering