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[BobRoberts]

Client is using mark in commerce for 15 years (that's a good round number).  Let's say that client receives TM C & D from user with Federal TM Registration, where client's use predates the Application for Fed TM Registration.  Assume no question regarding LOC of clients mark and the accuser (C&D drafter).  Now, let's add that client has some evidence to support use of the TM before the 'first use' date listed on the Fed Reg.

Considerations: 

Client is possibly Sr. User (but realize that Fed TM Reg holder may actually be able to show a first use that predates clients use and thus show that Fed TM holder is actually Sr. User)
Latches (assuming Fed TM Reg Holder never contacted client prior to yesterday regarding TM Infring).
It would appear that at the least, Common Law applies since Clients use predates Federal TM Application (and constructive notice)

Questions:

When responding to the C&D, do you focus on just the 'my client appears to be the Sr. User'?  Do you provide some of the evidence when responding to the C&D that client may be Sr. User, or wait until it's requested?  (of course, understanding that Fed Reg holder may have an earlier date of use than their listed 'first use' date on the Fed App) (I would be inclined to wait until it's requested, but why would accuser 'believe' my assertions without some evidence?).  And does tha analysis change if client can sho state Incorporation documents from at least within 3-4 months of Fed TM Application filing- i.e., where client started using the Mark, but didn't file for incorporation until after they began using the mark)...  Why does this incorporation paperwork matter? To me, it would seem that State incorporation should have made it more likely that policing searchs (or Trademark clearance searches) would have identified my client's use the the mark 15 years ag, as opposed to a client that only, say, advertised in the Yellow Pages...

When Responding to the C&D, do you also include the 'and your failure to properly police your mark for 15 years prevents you from asserting your rights today' , or just initially stand on the 'My client is Sr. User' and see what occurs.

And, in these cases, is future silence by the accuser the indication that the case will not be pursued, or do you request an agreement from C&D Drafter that no (legal) action will be pursued?

It's kinda nice to be on the side with a strong case....

Thanks for any input.

[Spielman]

Based merely upon the facts presented, I would focus heavily on the long term use and minimal LOC. With that said, proof of senior user stauts is important in our response letters, if that proof is very convincing. Incorporation documents may be helpful, if the copr name is similar or same to the mark. However, since most states could care less about federal trademarks when allowing a corporate name, then this eveidence is usually not very strong. Since it was 15 years ago, any proof of a trademnark search is probably unlikely to be in your client's posession. As far as the interplay of waiting to provide evidence or just providing it up front, it all depends upon the strength of the evidence and the percieved agressiveness of the potnetial Plaintiff. Lastly, after responding to the letter, if there is a long time failure to pursue the infringment action, i would view it as better to make the laches argument.

[BobRoberts]

Thanks Spielman.

"I would focus heavily on the long term use and minimal LOC."
I'm guessing you mean to minimize talking about the LOC, since that would be a losing point for us (here, not much question about LOC).  I agree.  I was going to say nothing about LOC in my response.

"With that said, proof of senior user stauts is important in our response letters, if that proof is very convincing. Incorporation documents may be helpful, if the copr name is similar or same to the mark."
Here, the Incorp documents are identical to the mark.  And, the client saved not only bank statememtns and canceled checks, but business receipts with services performed as well.  Now, in this situation, I do understand that Fed TM Holder may come back and say "well, that was our 'at least as early as' date, and we were actually using it <some date preceding ours>" 
That is why I was considering mentioning the latches/estopple from enforcement argument here -and why I saw Incorporation as somewhat important, as policing searches should have identified a business that was incorporating, or perhaps from the other side of the coin, that since client incorporated with the State prior to the other party claimed use of the mark, the State Database should have placed client on the RADAR of other company (and evential Fed TM Registrant).   

"As far as the interplay of waiting to provide evidence or just providing it up front, it all depends upon the strength of the evidence and the percieved agressiveness of the potnetial Plaintiff."
Regarding the evidence of use, it seems to me to be strong (as long as it is not fabricated- and  I have NOT even an inkling of a reason to believe it is fabricated).  Aggressiveness of the Plaintiff.  Probably 'avg. agreesiveness- not overly or undrly.  In fact, the attorney signing the letter doesn't appear to practce in Trademarks (at least that is not in the atorney's areas of practice that I found). 

"Lastly, after responding to the letter, if there is a long time failure to pursue the infringment action, i would view it as better to make the laches argument. "

Agreed.  I was considering to responding that "We are Sr. User" and "Besides, you failed to police your mark" (well, maybe not exactly in those words).  So would you include a receipt for services showing Sr. Status with the response, or wait until it is requested?

Thanks again, Spielman, and also interested if others have input as well...

[BobRoberts]

After providing (let's assume) sufficient information to show that your client has rights to use the mark at issue, what is the proper way to indicate that the matter should be considered settled?
 
That you expect no further communication on this matter? 

That  you consider this matter closed ? 

That you request that opposing counsel to consider this matter closed, and expect no further communication?

-Just looking for the "go fly a kite" closing to the Cease and Desist response.

Thanks

[TheTrademarkCompany]

We always say something to the effect:

"I trust this satisfies your client's concerns in this matter.  If you would like to discuss anything in this regard further please do not hesitate to call.  Otherwise, kindly note that we consider this matter concluded and will, accordingly, be closing our file."

Just a Thought....

[BobRoberts]

Thanks TTC!