Re: Suspended Trademark Application Letter

Subject: Re: Re: Suspended Trademark Application Letter

Comments:
: : Hello there, : : I received a letter from the trademark office today indicating that our Trademark could be "confusingly similar" to an existing trademark that is currently in the opposition stage. Our product has been in use since July 1998. : : We had a failed business relationship that screwed up our ability to file the trademark and ended in a lawsuit over the product and the name of the product, which was settled with us as owners of the product and the name. There was a trademark registration in place from early 2000 under a different, but related company name. We were unable to register the trademark during the lawsuit (according to our attorney, and they tried to convince us to just change the name which we didn't want). : : Now during this period there were 3 different companies trying to get a similar trademark, and now there is one left who put their request in 11/2001 and say their first use is 11/2001. Ours was filed 6/2002, and reported in use since 7/1998 (which we have documented proof). W : : My question is what takes precedence, the filing date or the first use date. Also, even though the Service from the other company and the product from our company are in the same industry, they are in my opinion would not be confused as we wouldn't even target the same customers. : : I'm also certain that this company would known of our product as we are very well entrenched on the web, including registration of the website with the same name as the trademark (registered since 1998). Do they have some sort of responsibility to recognize that a product with that name already existed ? : : Any help would be appreciated. : Dear Mr. Sebenick, : The date of first use in the class is critial. You must watout for the incontestability of other registered marks. : M. Arthur Auslander : Auslander & Thomas-Intellectual Property Law Since 1909 : 505 Eighth Avenue, New York, NY 10018 : 212-594-6900, fax 212-244-0028, aus@auslander.com : ELAINE's Workshop® : E arly L egal A dvice I s N ot E xpensive™ : Reality Check® :

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