Legal Question in Intellectual Property in California

I have this company that i have been running and paying taxes on and i had this person that i have done busines with ( not a co owner just a independent contractor) and i fired him within a month he applied for a trademark/tradename with MY business name along with that he filed a CA DBA and now he is sueing me for among other things trademark infridgments ! i looked into the status of his application and its to late to oppose it, however 2 other companies are opposing the application one of the companies is a NFL league ! ( i am doing this pro per ) I asked the uspto if he is the legal owner of this name, they replied that untill all opposing rulings are complete and that he is clear of all hurdles then and only then he will be the legal owner of this trademark. with that being said i have 2 questions:

1) Since he isnt the legal owner of said name how can he sue over whats NOT LEGALLY HIS?

2) Do i have " Common Law" since i have been doing business first ( tax records and contracts )


Asked on 8/08/09, 3:26 pm

1 Answer from Attorneys
Richard Jefferson M.E.T.A.L. LAW GROUP, LLP

Based on what you are saying, he could not sue you for trademark infringement in federal court, but possibly bring an unfair competion action or other similar cause of action in state court. If you have the common law rights then you will prevail. Also, if for some reason his mark gets approved you may want to initiate a cancellation proceeding.

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Answered on 8/08/09, 4:45 pm


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