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Related to a prior question we filed for a federal standard word mark in the category of cosmetics with the USPTO. Now what?

Pittsburgh, PA |

Related to a prior question http://www.avvo.com/legal-answers/although-common-law-, we filed for a standard word mark utilizing the main word in our name that is descriptive to us. We are now seeking council to assist us with the next steps. As the application can take months and is not guaranteed approval. Is there any protection or steps an attorney can take to protect our brand in the interim since there is a pending registration? In this particular state, we can show we were the first to use the mark in commerce.

http://www.avvo.com/legal-answers/although-common-law-trademark-generally-only-prote-1512739.html

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Attorney answers 4

Posted

If you had been using the mark in commerce, you may have common law trademark rights in the mark that grants you limited protections in the mark before your federal registration is issued. Yet, further information is needed to confirm. It is harder to enforce common law trademark rights against infringing ads and websites or confusingly similar domains as ISPs and ICANN often require evidence of an actual federal registration in the mark before taking action against alleged infringers.

As I see it, you only have two enforcement options prior to obtaining federal registration: (1) send cease and desist letters, but as you would be doing so without a federal registration, it would likely only amount to a scare tactic; or (2) register a Pennsylvania state trademark, but this would also take time to register and you could only enforce it within Pennsylvania.

Working with a qualified intellectual property attorney can further assist you with these issues. Good luck!

Asker

Posted

Great thank you. In the meantime, I just completed the Texas trademark application as that is where the infringement is occurring and we have been doing commerce in that state long before the infringer with our mark.

Lucas Seth Michels

Lucas Seth Michels

Posted

Good to hear. Despite the reduced persuasiveness of cease and desist letters without a federal registration, they are still a suggested measure. Good luck!

Russell William Kinsey

Russell William Kinsey

Posted

I hope that you are also using your trademark in Texas as the fact that it is the site of potential infringement is not sufficient to obtain state registration in a state where you are not already using the mark.

Asker

Posted

Yes, we have been using our trademark in commerce in Texas since 2011 and in fact manufacture some of our products in the state of Texas. We have hired legal counsel who feels with or without the trademarks registered, we can show we have common law, that trade is being conducted on our good will, can show there is infringement of rights and violation of fair competition and and feels we can bring a legal action against this company from our home state having jurisdiction since they sell online and their products can be purchases in our state. He is sending a nasty warning letter and following up with a law suit if that does not work. Thanks!

Russell William Kinsey

Russell William Kinsey

Posted

Ok good. Sounds like you are on your way. Good luck.

Posted

The best protection you can have is to simply keep using the mark with the goods & placing the superscripted TM by the word you're claiming as a mark. Your USE of the mark is giving you your rights in it; not the registration. The registration will just expand & enhance those rights but you can't control the speed or outcome of the USPTO examination.

The only other enforcement measures you could take are monitoring the market & sending notices to alleged infringers, as Mr. Michel stated. Demand letters do work better with a federal registration & when sent by a lawyer. Therefore, you are best advised to retain a trademark attorney who could also help ensure that your application registers as well & as fast as possible.

Good luck.

Alex Butterman is a trademark attorney with Staas & Halsey LLP (http://www.staasandhalsey.com), a Washington, D.C. IP boutique law firm. Alex is admitted to the bars of Washington, D.C., New York and New Jersey but, unless otherwise specified, the answer is intended to be general enough to apply to any U.S. state and based primarily upon his knowledge and experience with applicable federal laws. The opinions expressed are those of the author and do not necessarily reflect the views of his firm, Avvo or other attorneys. This answer is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship or obligations are established herein, although consulting an attorney to discuss your specific situation is strongly recommended. This is especially true of trademark law because TM law is so fact-specific and full of esoteric nuances and exceptions that could easily result in a critical legal error without proper advice from experienced trademark counsel.

Asker

Posted

Great thank you. In the meantime, I just completed the Texas trademark application as that is where the infringement is occurring and we have been doing commerce in that state long before the infringer with our mark. She's ignored Cease and Desist so I will gladly accept quotes for helping with the letters. Thank you!

Asker

Posted

Rate quotes that is, thank you!

Russell William Kinsey

Russell William Kinsey

Posted

I can't speak for my collegues but it is unlikely that an attorney will post a quote for these services online. Please contact myself or another trademark attorney for a free consolation and analysis of what it will cost in legal fees to address your issue.

Posted

I'm going to repeat what I said in response to your first question -- you need to have a trademark attorney pass judgment on whether what you're using as a trademark can even properly serve as a trademark. Especially after your new information that "we filed for a standard word mark utilizing the main word in our name that is descriptive to us." A word that merely describes your business or your product or service CANNOT serve as a trademark [unless it acquires, through your long and exclusive use, secondary meaning]. You should not send any more cease and desist letters -- even to the person who adopted your name and slogan -- without first speaking with a trademark attorney. Good luck.

The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

Asker

Posted

I did not file it blindly. I had the assistance of a friend who has received about 30 trademarks personally in the same manor from USPTO and did the trademark search, etc. for me. Perhaps descriptive was the wrong term to use in my question. It is a common word not related to our goods. An example would be APPLE for computers. It is well within the scope of trademark protection as it is not a common word for our goods and no one else has trademarked it in that class. It's an an arbitrary word when used in connection with the manufacture and sale of our goods. I have not sent any more letters. I am filing the state trademark in the meantime and having an attorney send the letter as suggested. Thank you.

Posted

I am not sure about the extent of due diligence that was done here. Getting legal guidance is most important upfront, not after the application was made. If the mark is in fact descriptive, then you likely will receive an office action from the Examiner.

Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a detailed explanation of the due diligence process.

I suggest that you consult with a TM lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

Best regards,
Frank
Natoli-Lapin, LLC

DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.

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