Trademark: If I abandon a trademark request, can I refile a new TM?

Asked 12 months ago - Austin, TX

My Trademark is currently being opposed, in part because the opposer states our names are too similar (we both have "ask" in our name) Nothing else is similar, however, I was planning to extend our name making it longer and creating more differentiation. Would it make sense to just abandon the current TM and start over with the new? I really don't have $ to fight through a lengthy TM battle. Thoughts?

Attorney answers (4)

  1. Gerry J. Elman

    Pro

    Contributor Level 15

    8

    Lawyers agree

    Answered . Hi, again. You seem to be a serial asker, now seeking actionable advice on overall strategy. But nobody can advise you sensibly without the whole story, which shouldn't be posted publicly but should be disclosed confidentially to a lawyer you engage for this purpose.

    Nevertheless, in the spirit of generosity, I am about to respond to your invitation to offer "thoughts" though as a practical matter, they're worth just about what you paid for them.

    What I think is that you are in over your head and are splashing about, seeking to make head or tails out of potentially confusing doctrines of trademark law and practice. You might have been lucky to have been granted a trademark registration after the Examining Attorney failed to find a confusingly similar registered trademark for pertinent goods or services. But you weren't, because some business came out of the blue and is investing in legal firepower to shoot you out of the water.

    If you had been well advised at the outset, it's likely that you would have discovered the mark of the company that's opposing you and would right then have evaluated the desirability of selecting at the outset a more differentiated trademark.

    I speculate that, since the USPTO's Trademark Examining Attorney allowed your application, the opposer's mark is not federally registered. I say that because the USPTO Attorney searched, primarily or exclusively, the USPTO database of federal registrations and pending applications, whereas an opposer may potentially also rely on "common law" rights developed through use in commerce even though the mark isn't federally registered.

    So, yes, maybe it would be opportune to throw in the towel, and go back to the drawing board to devise a different trademark. But without knowing more, I surmise it's also possible that you've got a winning case and the opposer is just blowing smoke. In which case, it would be a shame for you to back off at the roar of a paper tiger.

    Moreover, if you are advised by experienced counsel, it might be feasible to play "let's make a deal" with the opposer rather than to fight to the death.

    f you keep doing it yourself, I can imagine a scenario wherein you re-file for a modified version of the trademark you originally applied for, get an allowance from the Examining Attorney, and then in a year find yourself facing another opposition from the same opponent. By then, you'd be sadder but wiser, but still penny wise and pound foolish.

    This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an... more
  2. Alexander H Butterman

    Pro

    Contributor Level 13

    5

    Lawyers agree

    Answered . Mr. Elman really answered your question as well as I think anyone can. All I would add, which should emphasize and clarify his answer, is that if you want to throw in the towel and start fresh, you really should work with the opposer to make sure the mark is different enough that the wont oppose it again. And in that case, you really need to work with an attorney to deal with the other side for you. Otherwise, you likely will either not be taken seriously or will be taken advantage of.

    Alex Butterman is a trademark attorney with Staas & Halsey LLP (http://www.staasandhalsey.com), a Washington, D.C.... more
  3. Joseph Sampson Ford Jr

    Pro

    Contributor Level 11

    5

    Lawyers agree

    Answered . I would ask whether the opposition has any merit, and that would determine my recommended course of action. An opposing company will probably not bring an action unless that company feels some reasonable merit to the action. However, you admittedly do not have the dollars for a lengthy TM battle, so you will not be able to commission an infringement opinion report to determine your potential exposure. Therefore, you should negotiate a settlement with the opposer where you will agree to cancel your current mark and adopt a non-confusing one, and the opposer will provide you a consent letter for the revised mark should the revised mark's trademark application be later refused for a likelihood of confusion with the opposer's mark. However, please note that a consent letter does not necessarily mean your registration will be automatically issued by the USPTO.

    You could potentially file a new application, but you may also get further oppositions for this new mark if you do not conduct a reasonable mark search. Therefore, you will likely have much better success if you pay an experienced trademark attorney for a few hours of time to guide you through this matter.

    The foregoing response is provided for general informational purposes only and is not a solicitation for business.... more
  4. Bruce E. Burdick

    Pro

    Contributor Level 20

    1

    Lawyer agrees

    Answered . Although the facts you give are insufficient to give you a definite answer, generally it is best to adopt a trademark that is free of conflict. It is also best to use a trademark attorney and have a clearance search done before investing time and money in something as valuable as your brand name. And, trademark oppositions can get very expensive if you have a determined adversary as you will need your own attorney to have a proper defense to the opposition.

    What you need to do first here is see a Texas-licensed attorney for a free consultation. I am one, and even went to law school in Austin, but being located near St. Louis, am not taking many Texas clients currently. I would be happy to chat with you briefly for FREE and refer you to a top-notch attorney in Austin. It sounds like you already know the answer to your best response to the opposition, but you clearly need some guidance on your options to confirm that is the right choice and, if so, what should be your next steps after dropping the application.

    At any rate, get an attorney's advice ASAP so you make the right moves now and in the future and get the most for your money. You might not think so, but hiring a trademark lawyer is going to save you money in the long run and avoid a repetition of this mess you got into by going cheap and not hiring one.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is... more

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