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[Jonathan Rollman]

Hello,
I am hoping someone can help me in finding out if there is any way I can oppose a Live trademark.  AS far as I know, the current holder of the TM has not used it for it commercial purposes even though they have held it since 2003.  It was published for opposition on May of 2006, so I am not clear on how to proceed or even if I have means of getting the TM.  I am intending to use the trademark for commercial purposes if I can get it registered under my company.  Any help will be greatly appreciated.  Thanks.

JR

[Lyza]

Jonathan, I am going to assume that the application in question was filed under an intent-to-use ("ITU") basis.  Under an ITU-filed application, an applicant does not actually have to prove use of a mark in interstate commerce for several years, yet the U.S. first-to-file system will considered the ITU applicant as primary owner of the mark.

If the mark was published in May, let's choose May 30th, and you didn't file an Extension to Oppose by June 30th at the latest, you've missed the PTO-provided chance to stop an Applicant from registration.  The PTO, however, will not arbitrarily cancel one application just because someone opposes it.  You must be able to prove you have superior right to the mark in order to secure cancellation of the previously filed application.

Going back to my earlier statement regarding extended time to prove use, a Notice of Allowance is issued following publication (generally within 2-3 months afterward).  The date of the Notice starts a 6 month time clock.  An applicant must either prove use of the mark in interstate commerce by filing a "Statement of Use" ("SOU") within that 6-month period, or ask for an additional 6 months to file the SOU by filing an "Extension Of Time To File Statement of Use" (an "Extension").  Up to five 6-month Extensions may be file, totalling 36 months, before the Applicant must file the SOU or the application will be deemed abandoned.

Bottomline is that unless you are able to prove substantial and earlier use of the mark in interstate commerce than the current Applicant, which would give you common law rights, you should probably consider a different mark.  An attorney might have another take on this issue, but to me, and from what you said, you really don't have any standing to force the other company to give up its rights to the application or mark just because you want it, especially if you too are not using it yourself.  

For more information, you should contact an IP attorney and give him/her the full information.  Possibly he/she can, with all the facts, shed a different light on the issue.  Good luck.

Lyza

[JSonnabend]

You must be able to prove you have superior right to the mark in order to secure cancellation of the previously filed application.

That's not strictly true.  You need to be able to prove that you'd likely be damaged if the registration were to issue and/or remain in force (depending on whether we're talking opposition or cancelation).  You don't need "superior rights" in the mark per se to win.  That said, if your argument is based solely on your rights in the mark as a mark versus the applicant's/registrant's similar rights, then Lyza's statement is accurate enough.

At this point, you can wait until the application is abandoned for failure to file an SOU (which should be happening within the next six months or less, based on the timeline you mention) before filing, or you can simply file now, knowing your application may be suspended pending issuance/abandonment of the senior application.  If the registration issues, you can start a cancelation  proceeding, although I'm not sure you have substantive grounds to win, based on my understanding of the facts.

One other point -- you've assumed that the existence of the senior application would foreclose you from registering the same mark, which isn't necessarily true.  Similarity of marks is one factor, but so too is similarity of goods/services.  "Delta" is an airline, a faucet and a power tool, none of which are the same company.

- Jeff

[Jonathan Rollman]

Thank you both Lyza and Jeff.  I was incorrect in stating the date for the PTO.  It was May 2005, therefore, an SOU must have been issued to the holder.  Is there any way to find out if the holder has indeed filed the SOU?  If they have not, am I able to apply for the TM and have a realistic chance of it being approved?  

Also, when an applicant files an SOU, how do they prove they are using it for interstate commerce?  

Jeff,
referring to your last point, unfortunately for my company the TM that is registered is exactly the same type of product line that my company makes.  What would happen if I were to apply for the TM (being a junior applicant) and start distributing our product?  I imagine that we would face a cease and desist and/or a lawsuit.  

I have attached the details of the USPTO listing in hopes that may shed some light on what my next step will be.  

Mark Drawing Code        (4) STANDARD CHARACTER MARK
Design Search Code       
Serial Number       7833xxxx
Filing Date       November 26, 2003
Current Filing Basis       1A
Original Filing Basis       1A
Published for Opposition       May 17, 2005
Registration Number       298xxxx
Registration Date       August 9, 2005
Owner       (REGISTRANT) xxxxxx INDIVIDUAL UNITED STATES xxxxxxx  FLORIDA 32780
Attorney of Record       xxxxxxx
Type of Mark       TRADEMARK
Register       PRINCIPAL
Live/Dead Indicator       LIVE

[Isaac]

I think you've posted enough information to make finding the corresponding PTO record fairly simple.

In any event, an applicant's statement of use generally includes a sworn statement and samples exhibiting the trademark in use.  

The "1A" under Original Filing Basis means that the application for registration was filed for a trademark back in 2003 and not as an ITU.

[Lyza]

Jonathan, based on your new statement and data, use was established at the time of the original application filing so no SOU was ever due, but in any event, the mark has registered.  Unless you are prepared for expensive litigation, their federal registration is a done deal until August 9, 2011 when they will be required to file their Section 8 affidavit of use with specimens showing they are still using their mark in interstate commerce.  Another reality is that they will actually have an additional 6 months grace period to file giving them until February 9, 2012 before they either reaffirm that they are using the mark or must relinquish their registration.

You need the advice of an IP attorney and you should not proceed on your own.  The chances of attaining anything on your own here are slim to none.  Just the opinion of a paralegal, but if it were me, I'd be calling counsel before I spend any more money on promotionals.  Good luck.

Lyza

[JSonnabend]

Lyza and Isaac are fairly accurate in their analyses (including Lyza's point about the amount of information you posted -- I found the registration in question pretty quckly).  In any event, a SOU is besides the point, as the registration has issued and the date of first use is shown as March, 2003.

You still might be able to use (and perhaps register) the mark, but your chances of doing so depend almost entirely on facts not discussed here.  Regardless, you face an uphill battle even if the pertinent facts go your way.

- Jeff

p.s., regarding your "next step", it should be to talk to a lawyer, assuming you're serious in your efforts.

[Jonathan Rollman]

Thank you Lyza, Jeff and Issac.  I appreciate your help.  Looks like a phone call to my attorney and back to the drawing board are my next steps.  Take care.

[JSonnabend]

Jonathon -

In case you're still "listening" to this thread, I have a question.  If you have a TM attorney already, why are you seeking the advice of strangers here?  Wouldn't it be better to get complete advice under the aegis of the attorney-client relationship?  Is it a question of not trusting your lawyer, or of him being too expensive to go to for advice?

I'm always curious when someone who already has a relationship with an attorney turns to the forums for advice.

- Jeff

[Jonathan Rollman]

Jeff,
To answer your question, I do not have a TM attorney yet.  What I should have stated was I need to call my corporate attorney for a referral.  Although to be honest, I would have gone to the forum even if I did have a TM attorney.  The more knowledge I have about what's going on, the more I know about my companies position and the less I have to rely on the attorney to fill me in...and THAT makes it less expensive.  I guess you could say it's both for knowledge and financial purposes that I came to the forum.  In any case, I appreciate your effort.  

[Lyza]

One thing to keep in mind, Jonathan, is that you do not need to have local counsel to file/prosecute a federal trademark application.  Any state admitted attorney may practice federal trademark law so even if you are in Tulsa, a Michigan attorney can represent you.  Especially in this day and age of electronic filing, don't let geography inhibit you.  Good luck.

[Jonathan Rollman]

Jeff or Lyza,
One final question: The trademark we are after is a phrase that goes on clothing.  E.g. something similar to the "I'm with stupid" shirts that are out there.  If we were to go ahead and use the phrase the we want on the clothing, what type of ramifications can we expect?

[Jonathan Rollman]

Jeff or Lyza,
One final question: The trademark we are after is a phrase that goes on clothing.  E.g. something similar to the "I'm with stupid" shirts that are out there.  If we were to go ahead and use the phrase the we want on the clothing without holding the TM, what type of ramifications could we expect?

[JSonnabend]

I think both Lyza and I are aware of the actual mark (at least I know I am).

If you use the phrase on clothing and the registrant has valid trademark rights in the phrase, you'll likely be liable for infringement.  Damages can include lost sales and the like, and may have attorney's fees added.

- Jeff