Legal Question in Intellectual Property in California
I filed a trademark application which now appears on the USPTO website, but the examining attorney at the USPTO wrote an office action saying that a prior application (that has applied only but that has not actually registered yet) was filed before mine and if that mark ends up registering my mark might conflict with that mark. Therefore, my application would be stayed until that one registered (or not) to determine any potential conflict between the two marks. The USPTO said I could submit a letter explaining why I think the marks would be distinguishable from one another; however, I noticed that my "first date of use" and "first date of use in commerce" were before the other applicant (who doesn't even have a "first date of use" or "first date of use in commerce"), even though they filed their application before me. In my mind, I got there first since I actually used it in commerce before them and have continued to use it ever since! Since they don't have a "first date of use" or "first date of use in commerce" their application must be based on "intent to use" rather than "use in commerce" like mine. I don't know if this would be determinative of why my mark should be able to proceed without regard for the other application, or if I should mention this to the USPTO's attorney when I submit the distinction letter showing how my mark is different (it's somewhat similar, which is why I thought of this other argument. I need some guidance, please!
1 Answer from Attorneys
Once an application is filed, the USPTO will determine if a conflict exists between the mark in the application and another mark that is registered or pending. The principal factors considered in determining whether there would be a likelihood of confusion are: (1) the similarity of the marks; and (2) the commercial relationship between the goods and/or services listed in the application.
However, to find a conflict, the marks do not have to be identical. It may be enough that the marks are similar and the goods and/or services are related. If a conflict exists between your mark and a prior-filed pending application, the examining attorney will notify you of the potential conflict.
Given that your application has been stayed, if the attempt to distinguish your mark is unsuccessful, your final opportunity to object prior to registration of the pending mark may be once that application receives a Notice of Publication. At that time, any party who believes it may be damaged by registration of the mark has (30) days from the publication date to file an opposition.
I would advise that you have your full application and any Office Actions reviewed prior to responding to the USPTO. Please contact my office for full details of how to respond to the assigned USPTO examining attorney.
THE COMMENTS CONTAINED HEREIN ARE FOR GENERAL INFORMATIONAL USE ONLY, NOT LEGAL OPINION. NO ATTORNEY/CLIENT RELATIONSHIP HAS BEEN ESTABLISHED.
Related Questions & Answers
Looking for something else?
10,200 active attorneys ready to answer your legal questions today.
Featured Attorneys
Earn additional revenue and grow your business.
