Should we oppose another trademark application who applied for exact same trademark under exact same IC (pertaining to different goods within that same class)? They are 1B intent to use, whereas we have been using the trademark in commerce for 5 years. For the opposition form, should we oppose all goods in that class?
Of course you should since they intend to sell in the same class as you. You will need an attorney to assist you as you may be able to resolve it short of litigation. Many of us on AVVO offer free initial consultations. Why not give one of us a call. Good luck!
Attorney Vaccaro's answer is right on point.
A trademark opposition is a battle conducted at the federal agency called the Trademark Trial and Appeal Board with a complex set of rules and procedures. This is not a do-it-yourself project. And an experienced attorney will typically focus on your business objective rather than just on "winning" the game. Thus, as she hypothesizes, it may be possible to resolve the matter expeditiously without having to go to the mat.
This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance. Do consider marking selected Answers on this forum as Helpful, and one as a Best Answer. -Gerry J. Elman, J.D. Elman Technology Law, P.C. Swarthmore, PA
You shouldn't oppose anything yourself, you should hire counsel to do it for you. And you should oppose another user's intent to use a TM youi've been using for 5 years for confusingly similar goods.
You need to move fast, since the opposition period has a shaort window.
Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.
Yes you should oppose through an attorney, you have indeed acquired rights. You will need to show continued and consistent use. You should also apply for federal registration while you oppose.
This is not legal advise nor it forms attorney client relationship.
You need to get a proper analysis. I'm assuming that you have no registered mark right? This means that your rights to the mark only extend to the scope of your market penetration and market reputation. If I'm wrong and you do have a registered mark, then the big question is why the Examiner would not see a conflict? They don't always get it right, but in most cases if they don't see a conflict it is because there really is not one.
There are really a number of ways you can approach this as we deal with these issues all day long. I suggest that you consult with a lawyer in private and discuss your objectives and best course of action 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.
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.
No, you first need to have an experienced trademark attorney determine that you have superior rights to the mark and that there would be a likelihood of confusion. Just because two applications for registration are in the same International Class doesn't necessarily mean that there is a likelihood of confusion. There are several factors to consider, including common class of potential customers and whether the goods are marketed in the same channels of trade.
For more detailed advice, I recommend that you contact an experienced Trademark/IP Infringement attorney to advise you in confidence about your options and potential costs. Many IP specialty firms, like ours, offer an initial free conference by telephone, video conference or in person if you are available locally and would be happy to speak with you. Call and speak with an experienced Trademark Infringement attorney who can assist you.
Mr. Sack's postings on Avvo are of a general nature, based on the facts provided and are not intended to be taken as legal advice or to establish an attorney-client relationship.
I second Attorney Sak's response. In particular, the International Classification is entirely IRRELEVANT when considering whether the use of one mark is likely to cause confusion in light of an already-in-use mark. Each class includes highly UNrelated products: Class 1 includes both chimney cleaners and distilled water. Class 2 includes colorants for butter and fireproof paints. Class 3 includes after-shave lotions and incense. Etc.
So ... speak with your own California-licensed intellectual property attorney for his or her analysis as to whether the applied-for mark will likely cause confusion among your consumers [and consumers of any future products you intend to offer under your trademark]. 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.
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