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[CanAm]

We have a small manufacturing company. We introduced a line of consumer products in Oct 2005 with a specific brand logo and packaging look. We did not file an application but do have TM beside our brand logo on all products.

A large company filed 2 applications for almost an identical logo design in January 2006.  One app covered a remotely related but different line of products that totally unbeknownst to us they had started marketing 3 or 4 months before our introduction.  The second app was for the same logo but was an intent to use app covering specifically our product line catagory.  It is possible that BigCo became aware of our product line prior to their application given our mutual presence at an Expo but I have no evidence that they were.

USPTO will publish for BigCo's applications for opposition within the next 2 months.

The question is strategy.  I want to avoid litigation if possible and also want avoid getting sued later.  However, we do have an investment in this program and I am not inclined just to walk away.  Are we better to do something before the opposition period begins or just submit an opposition? I think it possible to find a settlement position that both company's could live with.

Any input would be much appreciated.

[JSonnabend]

There's not much you can do prior to the opposition period.  From my reading of your facts, I'm not sure who's rights trump the other's, and much likely depends on some details not shared.

My advice would be to speak to an attorney at your earliest convenience.  You risk losing your brand if you don't act timely and effectively.

- Jeff

[CanAm]

Jeff

Thanks.  Any thoughts on approaching BigCo prior to the opposition period indicating that we have an issue and would like to examine options before we get into the opposition period?

J  

[JSonnabend]

You certainly could contact the applicant and say, "hey, I don't know if you realized it, but we have rights that trump yours, and we're going to oppose.  Please avoid this costly route and drop your application/use of the mark."

- Jeff

[CanAm]

Thanks for the input.