Tuesday, May 14, 2013

What to do if you find out that you have been using a business name incorporating another person's trademark.

So, you have an established business and generated goodwill among your community. You may not be a large business, but within your geographic reach, you are well-known for quality goods or services. Subsequently, you conduct a trademark search and notice that your business incorporates another person's trademark. The person or company may issue you a cease-and-desist letter, asking you to stop using the name. Or the company may threaten suit. Or maybe you have already been sued. Or maybe you are just abundantly cautious, and have taken recent notice that you are technically infringing on another person's trademark rights. Maybe you noticed that the trademark was published for opposition, and is not officially registered yet. What do you do in such situations?

When the mark is published for opposition, but has not been officially registered, you have 30 days from the date it is published to oppose the mark's registration. Opposition entails filing an opposition stating the grounds on which you claim that registration of the offending mark would cause you harm.

If the mark has been registered, you have five years from the time of registration to seek cancellation of the mark. Cancellation of a mark entails filing a petition for cancellation stating the grounds on which you claim that continued registration of the offending mark would cause you harm. After five years, the mark becomes "incontestable," which means that you cannot challenge it except for a few circumstances.

You do not need evidence to file an opposition or cancellation. All you need is a belief that you will be harmed by registration or continued registration of a mark. If it has been five or more years since registration of a mark, and that mark owner has filed an affidavit for purposes of establishing incontestability, the grounds on which you can cancel the mark are limited. These grounds include misuse or misrepresentation, abandonment or "genericide." Genericide is the trademark term for when a brand name of a good becomes the generic name for the class of goods in which it operates.

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