Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[42nat1]

Senior common law holder notiifes jr. common law user of use.  1 year later, Jr. files application.

What are Sr. Options??  Obviusly there is infringment and Opposition, but I suspect Jr. is taking a gamble that Sr. doesn;t have the resources.  Anything else such as notifiying Office of fraud in the filing?

[JSonnabend]

Well, there's no fraud.  If the junior user is using the mark or intending to use the mark, it is free to file an application for registration.  You can send a letter of protest, but that's likely a futile gesture.  The situation you describe is precisely why the opposition mechanism was invented.

As one possible alternative, you could file a request for extension of time to oppose and then send a strongly worded C&D letter, ideally from an attorney, to the junior user.  In my experience, that is often effective.

- Jeff

[42nat1]

I was thinking of fraud in the filing, as the JR had previously been advised of the SR's common law usage and there is a record of them being advised of the usage on an SR's identical product a year before JR's application.  The fraud comes in based on the declaration which provides that the applicant is not aware of any others who have a right to use the mark in commerce.

However, I agree, that an opposition is probably the only real option unless the back off from a C&D.  I thought I'd ask around though.

Thanks

[JSonnabend]

I hadn't thought about the application declaration.  I suppose that you may have an argument there, but the means of asserting it would still be by way of opposition/cancellation, so the end point is still the same.

- Jeff