QUESTION
What could I do if I was sent a cease and desist for allegedly using a trademark?
Asked on Jun 11th, 2015 on Patents - California
More details to this question:
I have started a clothing line which has had positive responses and a major chain outlet is asking me to expand my line and move into more of their stores. I had applied for a trademark of the name and had to resubmit the paperwork a couple of times. Recently a company by the same name in a different state sent me a cease and desist email. They registered the same name a year ago in the clothing category. When I researched the name I chose, I couldn't find anything. I see they are listed in yellow pages as a beauty school. I am not sure that they are actually selling apparel of any sort even though they have the trademark registered that way. They do not have a website that I can find, and all indications point to them being a beauty school. What are my options for my trademark? Do they have the right to ask me to stop using the name? If they are not retailing clothing, do they have the right to prevent others from using the name? Can I use it everywhere but "their" area? I don't think this company has the financial fortitude to mount any real fight, but then neither do I at this point. I can't see how anyone would confuse the two companies, since they do not have a web site and the only business listing I can find shows that they are in the education business. Any advice would be most helpful.
4 ANSWERS
If they registered the mark before you did, and if they use it in commerce by the time they are required to do so (for clothing) they will likely have the right to use the mark for clothing. Be ware that there are 2 types of US trademark application. One is for things actually being used in commerce, and the other is for intent to use. Either way, the first to file will have priority. However if the application is for an intent to use, the party must actually use the mark in commerce to perfect the application. From what you say, it sounds as if the other party's application has the earliest priority date, but is unclear whether the other party has actually been granted the mark. You probably should engage a trademark attorney to clarify your situation for you.
Answered on Jun 17th, 2015 at 2:24 PM
You can register a trademark either in the state your business is in or with the U.S. Patent and Trademark Office. If you product will be sole in more than one state, register federally. Companies can have the same trademark if they are in different classes of goods and services. And different items of clothing can be included in different classes (sportswear vs. coats vs. prom dresses). Send a letter back to this company asking for proof of their registration and and a list of the products they are selling. Also ask to see how they are using the mark in commerce and how long they have been using it. If it turns out that they are using the mark, selling the same types of items as you, and have priority of use, you can always offer to buy the mark from them.
Answered on Jun 17th, 2015 at 2:24 PM
Appellate Litigation Attorney serving Boston, MA
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Banner & Witcoff, Ltd.
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You need a trademark lawyer. Much more information is needed to help you with this matter. Who was first to use the name commercially for clothing? If they have a registration - is it federal or state? If federal - you can download the entire file of the case - and look at how they provided proof of commercial use - with the date of first use. If you were first - you can petition to cancel their federal registration. You may have lots of options - but much more information is needed. GOOD LUCK!
Answered on Jun 17th, 2015 at 2:24 PM
Intellectual Property Attorney serving South Jordan, UT
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Pearson Butler
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You need to have an intellectual property attorney dig into the details. It can get complicated and everything can turn on the very particular facts.
Answered on Jun 17th, 2015 at 2:24 PM