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[Nitro28035]

Hello all,

So here's the current situation with my client.

My client has been using its mark since 2005 but has just recently made an attempt to register the mark. There was a conflicting mark already registered. We are currently litigating a petition to cancel before the USPTO because my client used the mark years before the confusingly similar mark. That said, my client does not currently have federal registration for the mark and only has common law rights.

There is another user of a confusingly similar mark (who my client also has superior rights over). The confusingly similar mark is just an transposition of my client's. The look and feel of their website is very similar. They sell the same exact services. There is obvious confusion here. The user of the confusingly similar mark has not made an attempt to register it. I sent them a cease and desist and they replied saying they would not stop using the mark and that they have common law rights to it in their locale (Florida, and my client is from NY). When you search my client, the infringer comes up right under them in search engine results. When you search the infringer, my client still comes up #1 with them right underneath. They are both web based companies.

So my question is, as far as filing an action, what can I do? Do I have jurisdiction in the federal courts or would I have to bring a state action? There is obvious confusion here and unfair competition (reaping without sowing). And if I bring a suit now will it prejudice a lawsuit in the future when my client does obtain registration?

Any insight would be much appreciated.

[JSonnabend]

You have a federal cause of action under 43(a), but do you have a case?  If your client's geographic use did not extend to Florida prior to that party's first use, you may not have senior rights in Florida.

- Jeff