Monday, September 19, 2016

Someone Else is Registering My Trademark: What Do I Do?

Dear Rich: I attempted to register a trademark in 2005, which became abandoned by the USPTO in 2007 as I did not have the proper resources to complete the process. The trademark is associated with an event I have been producing since 2002, and as such, I believe I have common law rights to this trademark. I own the .com and the .org domains for this trademark, as well as the gmail account. Further, I have newspaper articles, t-shirts, and flyers which establish a solid first use prior to 2005. In addition, I have had an active .com domain site with the trademark since the early 2000's. I recently checked the USPTO because I now have the resources to resume the process of registering this trademark, only to find out that another organization is in the process of registering the same mark, in the same class, but for a different purpose. They offer a yearly conference, and their first use date is listed as 2013. My event is a charitable arts event intended to aid non-profits. The trademark has not yet been published, after which time I understand there is a window within which I could oppose their registration of the mark. (1) Do you recommend that I reach out to the organization and attempt to negotiate with them for their registration of a different mark? (2) Or do you recommend that I wait until the publication period (which I believe is next month), and oppose the mark via the USPTO? (3) Are there any strong exemplar materials you can direct me to to help me mount the best case for opposition? What about a template for a letter asking them to work with me on the registration of a different mark? (4) If I am successful with the opposition, or their cessation of the registration process for this mark, is there any strategy you would recommend to get a successful trademark registration on record with the USPTO despite the abandoned mark from 2007? i.e. Is there any chance that I could resume the registration of the original abandoned trademark under a different class? (I originally registered the mark in class 41, do you think class 35 would be viable since effectively the charitable event is meant to ultimately help non-profits thrive?) (5) If I hire an attorney for the opposition, what is the maximum amount of compensation you believe would be reasonable for taking on this particular matter? (6) Should someone else successfully register the trademark that I believe that I have common law rights to can they legally then ask me to stop using the mark? 
Even with our new Nespresso maker, we're not sure we're caffeinated enough to get through all of your questions. Let's start with some of the basics.
Your previous application. Your 2005 application was abandoned in 2007 based on a failure to file a proper trademark specimen. You cannot revive that application but you can file a new application and claim your original 2002 priority date. However the application you filed was for entertainment services, "namely, live performances by a musical band" which is typically used when claiming trademark rights for a specific band, not for an annual charitable arts event with multiple performers. So if you do re-file your application, you would want to tweak your explanation of services to make it clear you provide event services.
The other application. The other trademark owners filed their application in 2016 claiming the following services: "Organizing live exhibitions and conferences in the fields of education, culture, sports and entertainment for non-business and non-commercial purposes." From an examining attorney's point of view, their services -- as broad as they are -- may overlap with your event services. Their application has been approved for publication which should occur on October 4, 2016. If you file in a different class (Class 35 doesn't seem appropriate for your services), an examining attorney could: (a) possibly find the other application for the same mark, recognize the overlapping services and object to your registration; and/or (b) determine your choice of class is inappropriate and recommend refiling in Class 41 (which could prove expensive).
Opposing the other application. If you want to oppose the other application, you have thirty days to file a Notice of Opposition (fee: $300) on the basis that there is a likelihood of confusion. You can pay to extend that deadline up to 180 days. (It's possible an attorney may also advise that you file a trademark application which you would then reference in your notice of opposition.) You can file your notice of opposition electronically (and the USPTO has provided a manual explaining the procedure). The notice will require a response by the applicant and that will result in an inter-partes proceeding before the Trademark Trial and Appeals Board (TTAB), basically an administrative mini-trial.
Electronic filing basis for opposition
What's your best strategy? Unless you're familiar with legal proceedings and making legal arguments, opposition proceedings at the TTAB will likely require an attorney's assistance. You can read about typical TTAB actions at the TTAB blog, research TTAB final decisions, or you can search the TESS trademark database and click on the "TTAB status" tab when you find a registration that includes opposition proceedings. If you plan on contacting the other party before filing a Notice of Opposition, you should know what you're seeking beforehand  (a concurrent use application, a promise not to oppose your use within your region, a license, etc.) and you should keep your eye on the clock (so you don't lose the opportunity to file an opposition). Your best strategy will be determined after speaking with an attorney familiar with TTAB filings. We can't ballpark the cost of that representation although we're pretty sure it will cost more than your last root canal surgery.
Can the other applicant stop your use? Unregistered marks, even if they have priority, have limited rights versus registered marks. If you can prove priority you will probably be able to preserve your rights within the geographic area in which you have been operating ... but you won't be able to expand into other regions.