Threat of Trademark Infringement?

Hello:

Recently, I have been receiving inquiries regarding threats of trademark infringement. Threats of trademark infringement include:

1. Written or verbal communication by an entity or individual expressing their intent to use a trademark owner's trademark without their permission,

2. Written or verbal communication of an infringer's intent to register or claim ownership of an owner's trademark with the USPTO.

These threats are usually made when the infringer realizes that the trademark owner is using the trademark and has built up a goodwill. However, the trademark owner has not "officially" submitted an application for registration with the USPTO or the state in which the trademark owner is located.

If you are a trademark owner and receive threats of trademark infringement, take the following steps.

1. Hire a trademark attorney to draft a cease and desist letter to the infringer. However, a cease and desist letter is only effective if the infringer has already started to use the trademark.

2. Check the USPTO's database to determine if the infringer has filed an intent to use or an application based on use claiming your trademark.

3. If the infringer has filed an application for your trademark, hire an attorney to file an Opposition to the registration of the trademark with the USPTO.

4. Immediately submit an application for trademark registration with the USPTO. An application based on continuous use can be filed if you have been actively using the trademark in interstate commerce (offering a product or service to the public).

Remember, although a trademark owner may not have obtained federal registration of the trademark, a trademark owner still has priority to use the trademark in their region and natural area of expansion. The USPTO will consider this evidence when granting trademark registration.

I hope this article was helpful. Please contact me via email at lgivens@phillipsgivenslaw.com if you have further questions.