Someone Applied for the Same Trademark Before You
Waiting to file your trademark application seems harmless until you realize that someone else applied for the same trademark on similar goods or services. What are your options when others apply for the same trademark before you do? Do you have any recourse against an earlier-filed trademark application for a similar mark?
Need to deal with a third party application for the same mark? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore how you can protect your mark.
How to Protest an Earlier Application for the Same Trademark
The USPTO follows a rigid process for examining trademark applications. You cannot simply interject yourself into a third party application and start complaining about how you used your mark first. Any arguments about the first user of a mark must wait. A trademark protest, however, can be filed if you have the right kind of evidence.
Suitable types of evidence for a protest comprise, for example, a registration for a similar trademark. Faulty specimens of use may also be suitable pieces of evidence for protesting a third party trademark application.
Since a protest is limited to only certain pieces of evidence, most late filers will likely need other options.
When You Were First to Use a Trademark
Let’s assume that you were first to use your mark to sell certain goods or services in the US. Someone else comes along and files a trademark application for a similar mark before you do. Can you challenge that application based on your earlier use?
You can challenge a trademark application based on your earlier use, but only at a specific time. If and when the other application is approved, it will enter a 30-day window for anyone to file an opposition.
Recognize, however, that the other application might never be approved. The USPTO examining attorney might reject the other application for a variety of reasons.
3 Steps to Protect Your Mark While an Earlier-Filed Trademark App Is Pending
Here are three things you can do to protect yourself in the meantime:
- File your trademark application promptly.
- Monitor the third party application.
- Prepare a gameplan to execute when the right time comes.
First, promptly file your trademark application. Why? Because if you keep waiting, another third party can file before you. Then you will have two obstacles to overcome instead of one. Apply now and expect that your application will be suspended pending a final outcome of the earlier application filed by the bad guys.
Second, monitor the third party application. You want to be ready if and when their application becomes eligible to be opposed.
Finally, if and when their application is published for opposition, prepare to file an opposition or request an extension of time to oppose.
Send a Cease-and-Desist Letter?
Be careful about sending cease-and-desist letters. You can expose yourself to risks, such as the other party filing a declaratory judgment lawsuit (DJ) against you.
The risk of a DJ lawsuit might be small depending upon the financial resources of the third party applicant. More likely, you may get no response from the other side, thereby realizing no return for the time and money spent on sending a C&D letter.
Be Proactive: Promptly Apply for New Marks
Every mistake can be a lesson learned. Be proactive right now in applying for marks already in use. Furthermore, you can file Intent-To-Use (ITU) applications for new marks which you plan to use in the near future.
What If the Other Party Already Registered a Similar Mark
Suppose someone obtained a trademark registration for a mark that you used first. Your options will depend upon the age of the registration. If the mark has been registered for less than five years, you may file a cancellation based on your priority of use.
An experienced trademark attorney might find other vulnerabilities in a registration that can be attacked.
